WB-IP News

February – March 2023  Issue

Edited by: Edwin Mtudza

(LLM IP, B.A Law)

Wilmot and Bennett Legal Practitioners

McDonald’s strikes back against trademark revocation

 Following McDonald’s loss of a trademark revocation procedure before the EUIPO in 2019, regarding its EU trademark BIG MAC, the  fast food chain Supermac’s (Holdings) Ltd filed a revocation application on the ground of an EU trademark not put to genuine use for a continuous five-year period.

The mark was revoked by EUIPO finding McDonald’s evidence for real trademark use as insufficient. Of course, this decision was appealed.

The Board of Appeal of the EUIPO annulled the previous decision stating that the mark’s use was proved for the following:

• In Class 29 – Foods prepared from meat and poultry products, meat sandwiches, chicken sandwiches;
• In Class 30 – Edible sandwiches, meat sandwiches, chicken sandwiches;
• In Class 42 – Services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods.

The Board found that EUIPO failed to assess properly some of the submitted evidence. For instance, although Wikipedia’s page devoted to the mark can be edited, it contains links to external reliable sources such as newspapers and magazines that provide information for Big Mac too.

In addition, McDonald’s submitted new pieces of evidence in the appeal. For example, in some countries, the so-called ‘Big Mac Index’ is very popular for comparing the cost of living.

Consumer surveys, financial papers, and additional ad materials were provided too, and all of them show extensive trademark use in countries such as Germany, France, the UK (before Brexit), etc

The Big Mac brand has been used only in relation to McDonald’s stores and not by other competitors who in turn show the sign is capable to indicate a particular trade origin.

Based on this the Board of Appeal concluded that Big Mac has been used as a trademark on the territory of the EU for a continuous five-year period.

Can Yoga be a threat to trademark protection?

This dispute focuses our attention on the issue of trademarks with a weak distinctive character and how this reflects on the scope of their protection.

In 2018, Mr. Swami Vidyanand filed the following international trademark where the EU was designated party, for class 41 – Education; providing of training; entertainment; sporting and cultural activities:

Against this application, an opposition was filed by YAplus DBA Yoga Alliance on the grounds of the following earlier mark in classes 35, 41, 42:

On 2 April 2020, the Opposition Division upheld the opposition. It found, in essence, first, that the services at issue were identical or similar and that they were aimed both at the general public and at professionals with an average level of attention, second, that the comparison of the signs had to be made from the point of view of non-English-speaking Czech-, Greek-, Croatian-, Hungarian- and Polish-speaking consumers in the European Union and that the signs were visually similar to an average degree, highly similar phonetically and conceptually similar to a low degree. Third, it found that the distinctive character of the earlier mark was normal despite the presence within it of certain elements, at most weakly distinctive, such as their decorative elements or the common word element ‘yoga’. Lastly, it found that there was a likelihood of confusion on the basis of Article 8(1)(b) of Regulation 2017/1001.

An appeal followed where the Board of Appeal annulled the Opposition Division finding no likelihood of confusion between both signs.

The General Court upheld that it should be borne in mind that, where an earlier trademark and a sign whose registration is sought, coincide in an element that is weakly distinctive with regard to the goods at issue, the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 does not often lead to a finding that such likelihood exists.

In those circumstances, it must be held that, in the context of a global assessment of the likelihood of confusion, having regard to the weak distinctive character of the common elements ‘yoga alliance’, the presence of figurative elements which are visually very different will enable the average consumer to make a clear distinction between the marks at issue, even for the part of the relevant public with an average level of attention, despite the identical or similar character of the services at issue. That is all the more true for the part of the relevant public with an above-average level of attention.

This case reminds us what a trap can be if someone uses a weak distinctive element as a trademark. Although such an element can be registered in combination with graphics or other words, by its nature it is weak which means that monopolization of this element is not possible. This in turn means that competitors can use it too for their brands, and all of this means potential marketing and recognisability issues for the trademark owner.

OSCAR trademark survives revocation procedure.

The case concerns the European trademark OSCAR registered for class 41 – entertainment and educational services, namely, conducting an annual award ceremony recognizing exceptional achievement in the film industry.

An application for revocation was filed against this mark, based on non-commercial use for 5 consecutive years. The EUIPO dismissed the action entirely.

Though the well-known OSCAR Awards ceremony takes place in Los Angeles, the trademark was subject to different advertisement campaigns that targeted EU consumers. Advertisements, on their own, constitute a way of trademark use according to EU legislation.

The trademark owner provided licenses for broadcasting of the ceremony to many EU television programs which in turn means commercial use of the sign.

The Oscar Awards show was watched by millions of Europeans, and the ceremony itself represents an entertaining service.

The Board of Appeal confirmed this decision.

Rolex losses trademark dispute in the EU

Are clothes similar enough to watches – that’s the question The General Court of the European Union ruled in recently T‑726/21 Rolex SA v PWT A/S.

PWT filed a European trademark application for the following figurative mark for many classes including class 25 – clothing, footwear headgear:

Against this application an opposition was filed by Rolex SA based on the following trademarks in class 14 – watches, for which an established reputation was claimed:

The EUIPO decided that the goods in class 14 – watches and those in class 25 clothing, footwear headgear are not similar because of their different nature and intended purpose. While watches are perceived as accessories, the goods in class 25 aim to dress the human body.

In so far as the opposition was based on Article 8(5) of Regulation No 207/2009, it found that the reputation of the earlier purely figurative mark was not established and that the reputation of the earlier composite mark was established for wristwatches. It added that the latter mark and the mark applied for were, at most, visually similar to a very low degree, that a phonetic comparison was not possible between them, and that the conceptual similarity resulting from the common presence of a crown had a very limited impact. It inferred from this that the relevant public would not make a link between those marks, with the result that no risk of injury to the reputation of the earlier composite mark was established.

The General Court upheld this decision entirely. Regarding the goods similarity issue:

In the present case, the applicant merely alleges the growing importance of online trade, the growing tendency towards convergence of fashion and technology, including wristwear, and the supposed well-known fact, common in the fashion sector and usual for consumers, of seeing clothing and accessories, such as eyewear, jewelry and watches, being offered in the same sales outlets. However, it does not submit any evidence to that effect. The applicant adds that that practice results in a certain cognitive behavior and a certain state of mind, but without providing further detail.

In addition, it must be pointed out that the fact that the goods at issue may be sold in the same commercial establishments, such as department stores, is not particularly significant, since very different kinds of goods may be found in such shops, without consumers automatically believing that they have the same origin

Furthermore, the applicant’s arguments that the purchase of the goods at issue may be based on the search for an aesthetic complementarity must be rejected as ineffective. The applicant itself concedes that such a fact is insufficient to conclude that there is a similarity between those goods.

When it comes to the claimed reputation:

In order to benefit from the protection introduced by the provisions of Article 8(5) of Regulation No 207/2009, the proprietor of the earlier mark must, first of all, adduce proof, either that the use of the mark applied for would take unfair advantage of the distinctive character or the repute of the earlier mark, or that it would be detrimental to that distinctive character or that repute.

In that regard, although the proprietor of the earlier trademark is not required to demonstrate actual and present injury to its mark for the purposes of Article 8(5) of Regulation No 207/2009, it must, however, prove that there is a serious risk that such an injury will occur in the future.

The Board of Appeal noted that, in order to demonstrate the existence of one of the types of injury referred to in Article 8(5) of Regulation No 207/2009, the applicant had not submitted observations to it, but that, before the Opposition Division, it had argued that the intervener could take unfair advantage of the degree of recognition of the earlier composite mark on account of the fact that the signs at issue were almost identical and the immense reputation acquired by the earlier marks, which allegedly convey images of prestige, luxury, and an active lifestyle. It found that, by those arguments, the applicant had in fact merely referred to the wording of Article 8(5) of Regulation No 207/2009, without submitting any coherent arguments as to why one of such injuries would occur. The Board of Appeal inferred from this that no injury referred to in that provision was established.

It must be stated at the outset that the applicant’s arguments do not make it possible to identify the injury or injuries set out in Article 8(5) of Regulation No 207/2009 which might be caused to the earlier composite mark, to its detriment, by the use of the mark applied for.