Edited by: Edwin Mtudza
(LLM IP, B.A Law)
Wilmot and Bennett Legal Practitioners
Apple losses trademark dispute for MAC in Japan
The matter concerns a trademark MACLOGIC, a computer software and design, filed by a Japanese company for classes 9 and 42.
Apple Inc. filed an opposition against this mark on basis of its earlier mark from MAC backed by a claim of trademark reputation. From Apple’s stance, the mark applied for held similarity to its earlier one due to the identical first part MAC, famous amongst consumers in Japanese in relation to the company’s laptops and software. This created confusion amongst consumers in regard to the goods and services source of trade origin.
On the contrary, the Japan Patent Office didn’t find both marks similar enough from a visual, phonetic, and conceptual point of view. The office considered the earlier mark’s reputation as established only for a specific group of consumers in the country but not for the public in general. As result, the opposition was dismissed.
The fact that the reputation of a mark amongst the relevant consumers was not enough in order for this claim to be well established for the proceeding was the interesting part of this whole decision.
Can anyone register an EU trademark for Powerball?
Lesson learnt, indeed filing a trademark application in bad faith can jeopardize a trademark’s future protection because the legislation allows such marks to be canceled. An example of such consequences is when the Gibraltar-based company for online bets Lottoland successfully registered a trademark for “Powerball” in classes 35, 41, and 42.
“Powerball” is a globally well-known US lottery, with a record jackpot of $1.5 billion USD. The US Multi-State Lottery Association organized the lottery’s EU trademark Powerball was revoked based on non-use for 5 consecutive years.
Upon finding this out the US Association filed a Powerball cancelation request with the EUIPO claiming bad faith mainly because the purpose of the Gibraltar company was to mislead the EU consumers about the real organizer of the lottery.
Lottoland however counterclaimed that, its trademark was legally registered because Powerball has no reputation amongst consumers in the EU.
In its decision, the EUIPO concurred with the US Association thereby canceling the EU mark based on bad faith attempt in regard to its registration. The Office considered Lottoland’s behavior dishonest in attempting trying to restrict the real owner of the mark to use it in the EU as well as all other market participants, from one side, and to mislead consumers, from another. According to the Office, there is no need for one trademark to be known in the EU in order bad faith claim to be possible.
One needs to bear in mind that, though one trademark protection has lapsed, this does not mean the sign can be used by someone else automatically. Such use should be analyzed carefully considering all facts and risks.
Contracts and intellectual property – a decision by the European court
By a contract of 25 August 2010, amended by an addendum of 1 April 2012, IT Development granted a license to Free Mobile and concluded a maintenance agreement with the company. Free Mobile is a mobile phone operator offering mobile phone packages on the French market, for the ‘ClickOnSite’ software package.
This is a centralized project management software designed to enable Free Mobile to organize and monitor in real-time the progress made by its teams and external technical service providers in deploying all its radiotelephone antennae.
By document of 18 June 2015, IT Development brought proceedings against Free Mobile before the Regional Court, Paris, France for infringement of copyright of the ClickOnSite software package and seeking compensation for its loss. IT Development alleged that Free Mobile had modified the software, in particular by creating new forms.
In addition to the substantive nature, in IT Development’s opinion, of those modifications, it argued, in particular, that Free Mobile held no right to modify the Article 6 provisions of the license agreement, entitled ‘Scope of the license’, stated that, the customer expressly undertakes not to reproduce, directly or indirectly, the software package, to decompile and/or carry out retro-engineering operations on it, as well as to modify, correct, adapt, create second works and add, directly or indirectly, to that software.
Free Mobile counterclaimed for abuse of process, arguing that IT Development’s claims were unfounded and inadmissible.
IT Development appealed against that judgment before the Paris Court of Appeal, requesting the latter to refer a question to the Court of Justice for a preliminary ruling, to set aside the judgment at first instance, and to declare the infringement proceedings which it had brought to be admissible.
IT Development also seeked a declaration that the software modifications made by Free Mobile constitute copyright infringements, hence Free Mobile should pay IT Development the sum of EUR 1 440 000 as compensation for damage suffered and, or alternatively pay the sum of EUR 840 000 as compensation for that damage on contractual basis. It also request, in any event, Free Mobile and Coraso, its subcontractor, be prohibited from utilization of the software and from reuse and data extraction.
Free Mobile requested that the court of appeal uphold the provisions of the judgment at first instance, and order IT Development to pay it the sum of EUR 50 000 euros by way of damages and interest for abuse of process and to declare all IT Development’s claims inadmissible and in any event unfounded.
The referring court states that one person cannot hold another person liable in contract and tort for the same acts, and that, second, tortious liability is excluded in favor of contractual liability where those persons are bound by a valid contract and the damage suffered by one of them results from non-performance or improper performance of a contractual obligation.
In addition, the referring court states that, under French law, copyright infringement, originally a criminal offense, is based on tortious liability but that, under that law, there is no provision under which such an infringement cannot exist where there is a contract binding the parties. In that respect, for example, infringement proceedings could be brought against a licensee who has infringed the limits of his contract in patent and trademark matters.
The Court decided that, Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights and Directive
The Paris Regional Court declared IT Development’s claims brought inadmissibly and dismissed damage claims by Free Mobile’s and interest for abuse of process and ordered IT Development to pay the costs. Further on the court held that two separate sets of rules relating to liability in intellectual property matters prevailed. One being tortious liability in the event of an infringement of the exploitation rights of the author of the software, as determined by law, and the other being contractual liability in the event of infringement of copyright reserved by contract.
In the present case, Free Mobile was clearly alleged to have failed to perform its contractual obligations, providing a basis for an action for contractual liability, and not for the tortious act of infringement of software copyright.
2009/24/EC of the European Parliament and of the Council of 23 April 2009 on the legal protection of computer programs must be interpreted as meaning that the breach of a clause in a licence agreement for a computer program relating to the intellectual property rights of the owner of the copyright of that program falls within the concept of ‘infringement of intellectual property rights’, within the meaning of Directive 2004/48, and that, therefore, that owner must be able to benefit from the guarantees provided for by that directive, regardless of the liability regime applicable under national law
Puma dispute over figurative trademarks in Japan
The case at concerns a class 25 trademark application.
An opposition was filed against this sign by PUMA on the ground of their famous early sign in class 25 too:
Since 1958 Puma has been using this sign for most of its sports shoes. Evidence was submitted for the reputation of its mark in Japan, amongst annual sales of 15 billion yen and 4% market share.
The Patent Office concurred that, the earlier sign has a strong reputation in the market. The Office concluded significant similarities to the extent that the new sign can be perceived as a reversed version of the earlier sign.
Taking into consideration the identity and similarity between the goods in both marks, the Office considered both marks as similar enough to create consumer confusion about the source of trade origin
Chrysler lost a trademark dispute over JEEP in Japan
Another interesting Trademark dispute concerns an application filed in Japan by an individual for the sign JEEPER in class 8 – hand tools.
An opposition was filed against this application, by Fiat Chrysler an automotive manufacturer. The ground was an earlier mark JEEP for which the company claimed reputation amongst Japanese consumers due to which arising of confusion was possible.
Admittedly, the Patent Office stated that the earlier mark JEEP has some level of reputation in the country but disputed the fact that it covers goods in class 8 as a matter of fact, both signs were not similar enough from the visual and phonetic points of view. There was no similarity, conceptually, because the applied mark had no specific meaning while the earlier mark was associated with 4×4 vehicles. On this basis, the opposition was entirely dismissed.
“Coffee rocks” trademark
Starbucks won a law against an application for a trademark “Coffee rocks” applied for Class 43. Its opposition was based on a family of earlier marks Starbucks for the same class.
The opposition had been dismissed initially by EUIPO, considering that there is no sufficient similarity between the respected signs. The decision was annulled by the General Court, this decision, stating that EUIPO erred in its conclusion about the similarity of the signs.
According to the court:
“However, even if it could be held, as the Board of Appeal found in the contested decision, that ‘[the] marks completely differ in their distinctive and dominant elements, namely the word “rocks” and the devices of coffee bean-shaped musical notes on the one hand and the word “Starbucks” and the figurative element of a mermaid on the other hand’, that would not, however, mean, in the light of the case-law cited in paragraph 46 above, that the assessment as to whether there is any similarity between the marks at issue could be confined to taking into account only those components. In the present case, it cannot be held that all the other components of the earlier marks and the mark applied for, and, in particular, those referred to in paragraphs 51 to 55 above, are negligible in the overall impression which those marks make on the relevant public.
A mere reference to that principle cannot be sufficient to establish that the similarities referred to in paragraphs 51 to 55 above may be regarded as negligible when assessing whether there is any similarity between the marks at issue since those similarities serve to show in the present case that, visually, the signs at issue have the same general appearance in common and are based on the use of the same structure and word in common ‘coffee’.
Consequently, in the light of the fact that the signs at issue are partially identical as regards one or more of their relevant aspects, the Board of Appeal erred in finding that the marks ‘[were] dissimilar from a visual point of view’, thus ruling out any possibility of similarity, even a low degree of similarity.
As regards the phonetic comparison of the signs, it must also be stated that the Court cannot accept the Board of Appeal’s view that the presence of the word ‘coffee’ in the marks at issue and the similar ending of the words ‘rocks’ and ‘Starbucks’ are not capable of making the marks similar.
Even though there are differences in the way in which the words ‘Starbucks coffee’ and ‘coffee rocks’ are pronounced, the two abovementioned similarities are, as such, factors which are likely to be taken into consideration in comparing the signs phonetically. In any event, those factors serve to rule out the possibility that, with regard to the phonetic comparison, there is not the slightest similarity between those signs. Furthermore, as the applicant submits and in contrast to EUIPO’s assessment, the ending ‘rocks’ may be regarded as phonetically similar to the ending ‘bucks’ on account of the relevant English-speaking public’s pronunciation of the letters ‘o’ and ‘u’.
Consequently, the Board of Appeal erred in finding that the marks ‘[were] dissimilar from a visual point of view’, thus ruling out any possibility of similarity, even a low degree of similarity.”