Trademark Insight 02/2023 – European Union & Germany

Dear Readers,

Last month again saw some interesting decisions, which we have compiled for you in the current issue of TRADEMARK INSIGHT. Below you will find our summaries of decisions of the BPatG, the EUIPO Boards of Appeal and the EUGC. Decisions dealing with graphical representation and distinctiveness of a "positional tactile mark", invalidity of a repeat application due to bad faith as well as right-preserving use of a smiley 3D mark are likely to be particularly exciting.

We welcome your feedback and suggestions by e-mail to trademark.insight@hoganlovells.com. 

We hope you will find our summaries useful and that you will enjoy them.

Thorsten Klinger und Dr. Andreas Renck

Index

Trademark capacity and distinctive character of a "positional tactile mark" (EUGC)
Invalidity of a repeat application due to bad faith (EUIPO)
Exploitation of reputation of a "Puma" trademark by "Puma" (EUGC)
Likelihood of confusion between "ROLESS" and "ROLEX" (BPatG)
Likelihood of confusion between two cigarette packaging marks (EUGC)
Use of a smiley 3D mark preserving rights (EUGC)
Likelihood of confusion between "UNOW" and "NHOW" (EUIPO)
Likelihood of confusion between "Captain T" and "C CAPTAIN TORTUE GROUP" (EUIPO)
Distinctiveness of the sign "SUMMER walker TIMELESS & CONVENIENT" (BPatG)

Trademark-capacity and distinctive character of a "positional tactile mark" (EUGC)

In a judgement of 7.12.2022, the EUGC overturned a decision of the Board of Appeal in which it had rejected the application for a "tactile mark" on the grounds of lack of distinctive character without first examining its general protectability as a trademark.

Neoperl AG applied for registration of the mark shown below in 2016 as an "other mark" and described it as a "positional tactile mark". According to the description of the trademark, the applicant sought protection for the structure of the cylindrical insert shown below, intended for water conduction, for goods in class 11, in particular aerators in the sanitary sector.

The Office objected to the application on the grounds that tactile marks are generally not accepted and suggested that it be renamed a position mark. After the applicant refused this, the Office refused the application for lack of definiteness on formal grounds. The Board of Appeal dismissed the appeal against this on the grounds that the trademark was devoid of any distinctive character, irrespective of the question of compliance with formal requirements.

The applicant then successfully challenged this before the EUGC. It argued that the Board of Appeal had not taken sufficient account of the specific features of the mark applied for and that, contrary to the Board of Appeal's decision, the sign was distinctive.

The court finds that the absolute ground for refusal of registration due to lack of distinctiveness requires that the sign can function as a trademark in the first place (Art. 7 EUTMR: "Trademarks which are devoid of any distinctive character shall be excluded from registration"). Accordingly, the distinctive character of a sign can only be assessed if it is established that the sign fulfills the formal requirements of a trademark. Since the Board of Appeal considered this aspect to be irrelevant due to the lack of distinctiveness in its opinion, it had not taken it into account in its examination. However, this was an erroneous assumption, since the question of whether the mark was capable of being protected as a trademark was a preliminary question that had to be resolved. It had to be examined first whether the sign fulfilled the requirements for registration and, in particular, whether the graphical representation was in itself a sufficiently concise and clear description of the subject of protection.

First, contrary to the applicant's view, the office was right to find that the graphical representation does not transmit the tactile impression - only the accompanying description ('elastic slats') achieves this, which, however, can not be taken into account under the EU Trademark Implementing Regulation because it extends the subject-matter of the protection claimed by the graphic representation. Although a description may be added to a trademark application, it must help to clarify the subject-matter and scope of the protection sought and must not give rise to contradictions or doubts as to the subject-matter and scope of the graphic representation.

However, by disregarding the claimed haptic aspects in the examination and by dealing directly with the distinctive character without first examining the trademark capacity of the sign, the Board of Appeal committed a serious error of law which, by virtue of the EUGC’s obligation to examine legality, must lead to the annulment of the Board of Appeal's decision.

(EUGC Judgment of 7.12.2022, T-487/21)

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Invalidity of a repeat application due to bad faith (EUIPO)

Multi Access Limited is the proprietor of the EU word mark 'WONG LO KAT', protected for goods in classes 5, 30 and 32. In 2016, Guangzhou Baiyunshan Pharmaceutical Holdings Co, Ltd filed an application for invalidity against this mark with the EUIPO on the grounds of bad faith, essentially claiming that it was an inadmissible repeat application. 

The trademark proprietor opposed this and relied on extensive evidence of use. There was no bad faith, as it had genuinely used the earlier EU trademark and the contested EU trademark had already been applied for before the expiry of the grace period for use of the earlier identical EU trademark. The extensive use of the earlier trademark showed that it did not need to file a repeat application in bad faith.

The applicant countered that the evidence cited in the revocation proceedings for non-use, which were conducted in parallel against the earlier trademark, did not show any genuine use of the earlier trademark that preserved the rights. Moreover, the trademark proprietor had already stated in the revocation proceedings that it had only used the trademark in respect of selected goods.

The trademark proprietor unsuccessfully appealed against the decision of the Cancellation Division granting the application for invalidity. After a pause in the proceedings due to the pending proceedings before the EUGC in the "MONOPOLY" case (judgment of 21.4.2021 - T-663/19, discussed on Engage), the Board of Appeal now ruled in favour of the invalidity applicant. The concept of bad faith had to be interpreted on the basis of the criteria of the individual case, taking into account a general public understanding of the term and the objectives of the EU Trademark Regulation. The "MONOPOLY" decision had provided a precise explanation of the concept.

Even if repeated applications are not per se inadmissible, such filing behavior could give rise to bad faith if it was combined with other relevant factors, including the intended avoidance of the consequences of non-use of the sign. The origin of the sign and its use since the application for registration must also be taken into account in the overall analysis. 

In the present case, due to the only partial use of the sign and the fact that the application was filed six days before the expiry of the grace period, it had to be assumed that the grace period for use of the trademark was to be artificially extended and thus competition was to be distorted. The applicant had not succeeded in explaining its conduct on grounds of commercial logic. The application for invalidity should be granted.

(EUIPO BoA, decision of 20.12.2022, R 2108/2018-2)

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Exploitation of the reputation of "Puma" and likelihood of confusion with "Puma" (EUGC)

This EUGC decision dealt with the exploitation of the reputation of the EU trademark "Puma", which includes protection for clothing, by an identical EU trademark application for various goods in Class 11, such as lighting and heating apparatus, as well as heat pumps and boilers, and the likelihood of confusion between these signs. The opponent had previously been unsuccessful before both the Opposition Division and the Board of Appeal. The opponent therefore brought an action against the decision of the Board of Appeal before the EUGC, but again was unsuccessful.

In its decision, the EUGC first examined the relevant public and concluded that the Board of Appeal had erred. The Board of Appeal had found that the trademark applied for was directed at professionals in the industry, whereas the earlier trademark was directed at the general public, meaning different publics would be relevant. At the same time, however, the Board of Appeal had also found that the appeal should be dismissed even if the public overlapped. The Court disagreed, finding that some of the goods covered by the later mark, such as lighting, heating or cooking apparatus, were indeed also directed at the general public and that the relevant public therefore overlapped, at least in part. However, the Board of Appeal's erroneous assessment is not sufficient to annul the contested decision, as it does not materially affect the outcome. Even taking into account the opinion of the EUGC, no other decision could have been reached.

Contrary to the applicant's submission, the similarity of the signs and the exceptional reputation are not automatically sufficient to establish a connection between these marks. Rather, the existence of a connection must be assessed on the basis of all the relevant circumstances of the individual case. As regards the assessment of the relevant public, the fact that some of the goods covered by the later mark are also aimed at the general public has no bearing on the correct finding that the goods covered by the conflicting marks are dissimilar. The goods covered by the later mark are sold in building and specialized shops, are produced by different manufacturers and are used for different purposes than the clothing covered by the earlier mark. It could not therefore be assumed that the relevant public would establish a mental link.

The court also rejected the applicant's argument that the impression of cooperation between the trademark proprietors could arise on the grounds that it had not been conclusively explained how such an impression should arise in the relevant public.

Finally, in the absence of a link in the mind of the relevant public, the use of the mark applied for would not take advantage of the distinctive character or repute of the earlier mark. The action was therefore unsuccessful.

(EUGC, judgment of 7.12.2022, T-623/21)

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Likelihood of confusion between "ROLESS" and "ROLEX" (BPatG)

The German Federal Patent Court (BPatG) dealt with the exploitation of the reputation of the trademark "ROLEX" by the application for the sign "ROLESS FURNISHING" for goods in Classes 2, 19 and 20, including paints, metal foils for painters, statues and busts made of stone, concrete or marble, office furniture and wardrobes. The German Patent and Trademark Office (DPMA) had previously partially upheld the opposition on the grounds that some of the goods claimed by the application mark could constitute works of fine art, which, like luxury watches, could be treated as investments, status symbols or collectors' items. However, this assumption would not apply to all the goods covered by the mark applied for.

Rolex successfully appealed against this. The BPatG first confirmed the outstanding reputation of the opposing mark, which could be described as a celebrity without further ado. The BPatG also confirmed the statements on the similarity of the signs. However, contrary to the DPMA, the court further assumed that a mental association was to be feared on the basis of the overall circumstances, even with regard to absolutely dissimilar goods.

Superbly known trademarks become detached from the goods and services for which they enjoy protection as their reputation increases. The sign thus becomes an asset independent of the goods and services claimed. The public could therefore sometimes perceive a similar sign as an indication of the famous mark even in the case of completely dissimilar goods and services. In the present case, the fame of the opposing mark ROLEX overcomes any dissimilarity of the goods and services.

(BPatG, decision of 12.8.2022, 26 W (pat) 32/20)

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Likelihood of confusion between two cigarette packaging marks (EUGC)

In this decision, the EUGC deals with likelihood of confusion between the cigarette packaging marks shown below. After Philip Morris had already successfully challenged the packaging design shown below on the right before the Opposition Division and the Board of Appeal of the EUIPO, the court now also dismisses the applicant's action.

In contrast to the likelihood of confusion, the protection of reputation does not place very strict requirements on the similarity of the signs. It was only necessary that the similarity of the signs was found to be sufficient for the public to establish a connection between the signs in the sense of a mental association.

That was the case here. Both signs clearly represented the front of cigarette packaging. Both representations contained at least one angular element separating the representation into a colored/dark upper part and a colorless/white lower part. The resulting white/bright triangles dominated the signs, while the other elements played only a secondary role, also because of their size.

Furthermore, the EUIPO correctly assumed that there was a likelihood of a link due to the similarity of the signs, the predominant reputation of the opposing mark, the identity and similarity of the goods and the identical sales markets. Furthermore, it was not necessary for the opponent to prove an actual absorption of profits or damage to its mark.

(EUGC, judgment of 21.12.2022, T-44/22)

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Genuine use of a smiley-3D-mark (EUGC)

McCain GmbH is the proprietor of the 3D-trademark shown below, protected for pre-fried potato croquettes and frozen mashed potato products in class 29. In 2018, Agrarfrost GmbH & Co KG filed a revocation application against this trademark with the EUIPO on the grounds of non-use, which the Cancellation Division rejected in 2020. The appeal filed against this by the applicant was unsuccessful. The inherent distinctiveness of a registered trademark could not be called into question in revocation proceedings due to the presumption of validity. Furthermore, the trademark proprietor had succeeded in proving that it had used the trademark in a manner that preserved its rights. The applicant then brought an action against the Board of Appeal (BoA) decision before the EUGC claiming that the BoA had carried out an inadequate examination of the degree of distinctiveness and had wrongly assessed the evidence submitted.

The EUGC rejects the action as unfounded and thus confirms the use of the trademark in a way that preserved the rights. The inherent distinctive character of the mark was not to be questioned. Furthermore, the degree of inherent distinctive character had no relevant influence on the question of use preserving the right, as this depended on the question of whether the public recognized a commercial indication of origin in the sign. The same requirements for other categories of marks would apply to the three-dimensional mark representing a smiley. However, since the trademark consisted of the shape of the products claimed, it had to be taken into account that the public would not, in principle, draw any conclusions as to the commercial origin of the goods from the shape of the goods. Evidence was therefore required to prove that the public recognizes an indication of origin when looking at the goods or their representation on the product packaging. In that regard, the BoA found that the contested mark was prominently displayed in advertising campaigns and on the product packaging. The trademark is depicted there in full, in impressive size and is in the foreground. The goods were also directly visible through the transparent product packaging.

It was clear from the extensive evidence that the consumer had been confronted with the mark so intensively that it could easily infer a reference to the manufacturer from the smiley. The applicant's argument that the mark was not significantly different from the customary trademark and therefore could not fulfil an origin function had to be rejected. It was common knowledge that frozen potato products were sold in the form of sticks, biscuits or wedges. In any event, there were no identical or similarly shaped products of third parties on the market during the relevant period.

The applicant's argument that the golden yellow color of the products contributes significantly to the distinctive character must also be rejected. The marketing and promotional use of the colored mark did not constitute a significant variation which altered the mark, but was rather natural, since the golden yellow corresponded to the natural color of the potato products. Finally, the BoA references to a market study on the degree of association of the contested mark were also not objectionable.

(EUGC, judgment of 14.12.2022, T-553/21)

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Likelihood of confusion between "UNOW" and "NHOW" (EUIPO)

The EUIPO Board of Appeal (BoA) dealt with likelihood of confusion between the signs 'UNOW' and 'NHOW' for partly identical and otherwise very similar services in classes 35, 37 and 43, after the Opposition Division had previously rejected the opposition. The BoA now dismisses the appeal as unfounded. For reasons of procedural economy, it assumed in favor of the opponent that the opposition mark had been sufficiently used in a manner that preserved the rights, without examining this in detail.

Furthermore, the Opposition Division correctly assumed that the goods and services were partially identical. The two terms "UNOW" and "NHOW", which are meaningless to the public and have an average degree of distinctiveness, are not sufficiently similar, and the public could more easily perceive the individual elements in such abbreviated signs. Whether resulting differences in signs also leads to a different overall appearance, however, must be examined on a case-by-case basis.

The clearly different beginning of the sign, to which the public pays more attention is of particular importance. The mere overlap with regard to three of the four letters is not sufficient for the assumption of an average visual similarity; rather, the signs are only similar to a weak degree. The phonetic similarity was also below average, and the various differences between the signs, led to a finding of no likelihood of confusion.

(EUIPO BoA, decision of 14.12.2022, R 595/2022-5)

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Likelihood of confusion between "Captain T" and "C CAPTAIN TORTUE GROUP" (EUIPO)

The EUIPO Board of Appeal (BoA) considered likelihood of confusion between "Captain T" (Trademark applied for) and "C CAPTAIN TORTUE GROUP" (Earlier Trademark) after the opposition was successful before the EUIPO Opposition Division. The BoA now dismisses the appeal.

There was identity or at least similarity between the opposing goods here, meaning that the BoA focused on the similarity of the signs and concluded that similarity exists. Both signs contained the distinctive term "captain". The element "TORTUE" in the earlier mark had no meaning for the relevant Spanish public. Furthermore, both the single letter 'C' in the opposing mark and the letter 'T' in the mark applied for were distinctive for the Spanish public, as they had no descriptive meaning for the goods claimed. Even though the letter 'C' in the earlier mark is clearly larger and appears at the beginning of the sign, it does not overshadow the other elements. On the contrary, the letter "C" rather underlines the word "CAPTAIN".

Figuratively, the signs coincided in the element "Captain" and the letter "T", creating an average visual similarity. From a phonetic point of view, the signs overlapped only in the elements 'CAPTAIN' and 'T'; in view of the consumer practice of shortening longer signs, neither the element 'C' nor the element 'GROUP' of the opposing mark would be pronounced. Overall, the signs were of higher than average phonetical similarity, and the Opposition Division was correct in finding a likelihood of confusion.

(EUIPO BoA, decision of 14.12.2022, R 1037/2022-4)

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Distinctiveness of the sign "SUMMER walker TIMELESS & CONVENIENT" (BPatG)

The German Federal Patent Court (BPatG) recently ruled on the distinctive character of the sign "SUMMER walker TIMELESS & CONVENIENT" shown below, after the German Patent and Trademark Office (DPMA) had previously rejected the application because the element "walker" is the English term for a walking person. According to the Office, the public understands the overall sign as a descriptive reference to a "timeless and comfortable summer shoe for walking or running". The graphic design also did not create an overall visual impression that went beyond the meaning of the word elements.

The applicant's appeal against this was unsuccessful. In the view of the BPatG, the sign is perceived by the public merely as a keyword-like factual reference to the quality or intended purpose of the goods claimed, but not as a commercial indication of origin. Nevertheless, the emphasized word element "walker" could be understood as a reference to the sport "walking". Orthopedic footwear could be used in this context. This also applied if the public understood the term in its English sense as "walking person".

In connection with the goods claimed, the overall sign would therefore be immediately perceived, at least by trade circles, as a keyword-like reference to the intended purpose and/or suitability of the goods bearing the sign. Insofar as the sign leaves open concrete characteristics of the goods thus designated, this does not affect the ineligibility for protection. The assumption of a descriptive character does not presuppose a fixed conceptual contour, let alone a unanimous opinion on the meaning.

(BPatG, decision of 12.12.2022, 28 W (pat) 525/20)

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Disclaimer: Please note that the decisions included in this newsletter are a subjective selection of relevant trademark decisions made by the authors without any claim to completeness.