Cross-Border Trade Mark Review

Legislation

Hong Kong

Crafting Precise Descriptions: Optimizing Trade Mark Protection for Virtual Goods and Services in Hong Kong

The Hong Kong Intellectual Property Department (HKIPD) recognizes the growing importance of virtual goods and services and has adapted its trade mark work manual to cater to these emerging areas. When filing a trade mark application for virtual goods or services, it is vital to ensure that clear and specific descriptions are provided to establish proper protection.

Regarding the description "virtual goods", the HKIPD's position aligns with the EUIPO's treatment of such items - both consider Class 9 to be appropriate for virtual goods as they are treated as digital content or images. However, the description "virtual goods" without additional detail is regarded as lacking clarity and precision. It is essential to specify the content to which the goods relate. For example, a more specific description accepted by the HK Registry would be "downloadable virtual goods, namely, computer programs featuring footwear and clothing for use online and in online virtual worlds" in class 9. Also, terms like "downloadable goods" and "NFTs" require further specification. The work manual provides that acceptable alternatives would be, for example, "downloadable digital files authenticated by non-fungible tokens [NFTs]" in Class 9 and "providing an online marketplace for buyers and sellers of digital files authenticated by non-fungible tokens [NFTs]" in Class 35.

The HKIPD has also adopted a similar approach to the EUIPO regarding the classification of services that relate to virtual or downloadable goods, as well as services provided online or in virtual environments. Regarding the latter, it is stipulated that the relevant services will be classified in line with the established principles of classification, which look at the underlying nature of the services and take into account their purpose in the physical world. For instance, the work manual provides that "virtual construction services provided in metaverse environments for entertainment purposes" involve the creation of three-dimensional models of buildings or structures that are not physically present for the purposes of entertainment in the physical world, and therefore the term would be proper to Class 41 rather than Class 37. Another example from the EUIPO's guideline is that "virtual transport services for gaming purposes" would be proper to Class 41 rather than Class 39 even though it emulates transport services.

For a comprehensive list of acceptable (precise) terms and unacceptable (imprecise) terms in the work manual.

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Case law

China

Airwair's 3D Yellow Stitching Mark Rejected: Beijing Court sheds light on criteria for distinctiveness of Position Trade mark

Airwair International Limited, in a bid to protect the signature yellow stitching that adorns the edge of the Dr. Martens shoes, filed an application for a three-dimensional trade mark with the China National Intellectual Property Administration (CNIPA). This application is essentially aimed at protecting the yellow stitching applied to the edge of the shoes, functioning as a position mark. To view the images, please click in the link to the decision below.

However, the CNIPA refused this application for lack of distinctiveness. Airwair appealed the decision, taking the case to the Beijing High People's Court (BHPC). Despite the ultimate refusal of the mark, this case serves as a benchmark for how position trade marks are scrutinized and evaluated for distinctiveness in China. In its judgment, the BHPC highlighted that position trade marks, face a tougher challenge in demonstrating acquired distinctiveness through use than three-dimensional marks used for packaging or containers. The BHPC undertook a thorough analysis of the criteria for assessing the distinctiveness of position trade marks. They evaluated multiple factors, including the mark's composition, its defined position, the goods' characteristics, and the mode of recognition. The court explicitly stated that the evidence of distinctiveness for position trade marks should exceed the industry's usual use and alter the relevant public's recognition habits regarding the parts of the goods.

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Singapore

Google LLC v Green Radar (Singapore) Pte. Ltd. [2024] SGIPOS 1

Green Radar applied for the registration of "grMail" to be used for IT security products, including a security add-on for emails. Google LLC ("Google") opposed this registration, citing their earlier mark "GMAIL". Amongst other grounds Google based on section 8(4)(b)(ii) of the Trade Marks Act (the "Act"), claiming that there would be dilution in an unfair manner by blurring. To satisfy this ground, Google had to show (a) that a mental link between the marks is established and (b) that consequently, there is a real and serious likelihood of damage to the distinctive character of the mark. However, the application of this test is difficult as it involves "a considerable degree of subjectivity".

In this case, while the Adjudicator held that a mental link between the marks is likely to be established, she did not find a real and serious likelihood of damage. In so concluding, the Adjudicator commented that the lack of likelihood of confusion and the lack of evidence showing the same remains a relevant factor to be considered in the analysis. This, taken together with her findings of a moderate level of distinctiveness of the earlier mark, a moderate level of similarity between the marks, and differences in the services being claimed for, allowed her to come to her conclusion.

In coming to her decision, the Adjudicator appears to be adding an additional condition to the statutory definition of "dilution" in the Act, which states that there can be dilution regardless of whether there is any likelihood of confusion on the part of the public. Here, the lack of evidence showing likelihood of confusion also weighed against a finding of dilution. It remains to be seen whether this approach will be adopted by the courts moving forward, and we will watch out for an appeal in this dispute.

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Germany

"Kölner Dom" Cannot Be Registered as a Trade Mark

The Federal Court of Justice ("FCJ") ruled on 12 October 2023 (docket no. I ZB 28/23) that the term "Kölner Dom" cannot be protected as a trade mark. This has an impact on the use of this term in the commercial context, among other things.

The obvious reason for the refusal of trade mark protection was that the sign had no distinctive character for certain goods and services, as the target public would only perceive it as the name of the tourist attraction and not as a reference to the commercial origin of these goods. The courts argued in all instances that the target public would only recognise the term as a name for the famous church in Cologne, not as a reference to the manufacturer of souvenirs. The word "Kölner" describes the place and "Dom" stands for a cathedral church. These two words together form a general term for the well-known church in Cologne. Accordingly, the trade mark has no distinctive character as it does not indicate the manufacturer of the products.

The decision therefore deviates in part from the decision of the European Court of Justice (ECJ), in which it ruled that the term "Neuschwanstein" fulfils the requirements of a trade mark. Interestingly, the FCJ had previously taken a different view in that case. However, the FCJ did not feel compelled to make a referral to the ECJ as part of the request for a preliminary ruling in the "Kölner Dom" case, stating that it was applying the criteria set by the ECJ.

This decision underlines the importance of the distinctiveness of trade marks and shows that not every term can automatically be protected as a trade mark. It is crucial for companies and trade mark owners to ensure that their trade marks meet the distinctiveness test in order to obtain legal protection. In the case of "Kölner Dom", this means that the term can continue to be used by various souvenir suppliers without this being considered an infringement of trade mark rights.

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UK

Recent UK Trade Mark Infringement Case - Relevance of Post-Sale Confusion

The UK Court of Appeal has reversed a High Court decision and upheld a claim that football boots and other footwear bearing a "tilted square" logo infringed Umbro's well-known double diamond trade mark. The decision expands on prior authority regarding post-sale confusion, signifying a more pragmatic and commercially astute approach to evaluating the likelihood of confusion.

You will find images of Umbro's registered diamond devices and the defendant's "tiled square" logo, together with an example of the "tilted square" logo applied to footwear in the link below.

When re-evaluating the question of infringement, the Court of Appeal judge gave particular consideration to the relevance of post-sale confusion, stating that:

"It is well established that it can be relevant to take the post-sale context into account when considering trade mark issues, including likelihood of confusion... Thus it is possible in an appropriate case for use of a sign to give rise to a likelihood of confusion as a result of post-sale confusion even if there is no likelihood of confusion at the point of sale."

In this case, the judge considered how a consumer might see the sign as it was used and how it appeared on the product in the post-sale environment. Critical to the outcome was the fact that consumers may see the "tilted square" logo at various angles, and not square-on, when affixed to footwear.

The judgment provides reassurance to brand owners, confirming that courts are required to consider all scenarios of how the relevant consumer will perceive the mark at the point of sale and afterwards. It is also an important reminder for practitioners that, while a side-by-side comparison of the marks on paper is a significant factor, it is not always decisive. It is therefore important to consider how a mark might be perceived in the post-sale context.

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EU

Landmark Ruling in the AUDI Case Sets Precedent for Trade Mark Infringement Relating to Spare Parts

On January 25, 2024, the Court of Justice of the European Union (CJEU) issued a landmark ruling in the AUDI case (C-334/22). This judgment marks a significant development in trade mark law, particularly regarding the infringement of trade marks by spare parts.

In its ruling, the CJEU sided with AUDI, affirming that a car manufacturer holds the right to prohibit the use of a sign identical or similar to its trade mark for spare parts. Central to the judgment was the determination that the contested element, a radiator grille shaped to accommodate for the four-ring AUDI emblem, despite its function as a spare part for a car, may still cause trade mark infringement if it bears resemblance to the registered figurative mark.

In its ruling, the CJEU clarified pivotal points: firstly, the repair clause, commonly applied in design law, does not extend to trade mark law and thus cannot limit trade mark protection. Secondly, trade mark law applies irrespective of the intended use, including any technical functions attributed to the product. The perception of consumers regarding the authenticity of the part is hereby deemed irrelevant. Moreover, the CJEU emphasized the relevance of the use of the contested sign, which aimed to replicate the trade mark proprietor's product, rather than merely indicating or referring to the origin of the goods or services. The limitations on trade mark rights outlined in Article 14(1)(c) of the EUTM Regulation, pertaining to referential use, do not apply in cases where the contested sign seeks to replicate the product protected by a trade mark rather than to designate or refer to goods or services as being those of the trade mark owner.

With this landmark decision, the CJEU has established crucial precedents regarding trade mark infringement relating to spare parts, setting a clear framework for future legal disputes.

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General Court Rules Veuve Clicquot's Orange Colour Lacks Distinctive Character in EU

The General Court was invited to assess whether the famous orange colour used by MHCS for their champagne Veuve Clicquot had acquired a distinctive character through use. The Court was called upon to clarify the evidence required to demonstrate the distinctiveness acquired through use, which must exist in all Member States. After recalling that it is not required to provide evidence of the distinctiveness acquired through use in each Member State individually, the Court recalled that evidence provided must nevertheless allow to demonstrate such acquisition in all the Member States of the Union.

Based on a lack of relevant proof of such a distinctive character having been acquired in both Greece and Portugal, as well as the lack of relevance for the other Member States of the proof related to Luxembourg and Belgium, the General Court concluded that MHCS (Veuve Clicquot) did not provide evidence of the distinctive character acquired through use. This decision underlines how difficult it is to produce direct and relevant evidence of the acquisition of distinctive character through use at the European Union level.

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Italy

Italian Supreme Court Rules in Favor of Ferragamo for Use of Audrey Hepburn's Name

The Italian Supreme Court has recently ruled on the admissibility of the use of the name of the iconic actress Audrey Hepburn by the well-known fashion house, Ferragamo. The company had been using Hepburn's name in connection with three shoe models: the "Ballerina Audrey Hepburn", the "Gondoletta" sandal, and the "Ira" shoe. Ferragamo's website stated that the "Gondoletta" model was worn by Hepburn, and the "Ira" was one of many models created specifically for the actress.

Hepburn's heirs raised objections to this, arguing that Ferragamo was using Hepburn's name for promotional purposes, rather than for informative purposes related to the actress's popularity. This, they claimed, was in violation of articles 6 and 7 of the Italian Civil Code, which protect a person's name and image rights.

The Supreme Court, however, ruled that a commercial or advertising purpose does not necessarily exclude an informative purpose, and thus the use of another person's name or image can be legitimate. The Court stated that in cases where both commercial and informational uses are present, a careful balance must be struck between the interests involved.

In this specific case, the Court found that Ferragamo was not violating Hepburn's rights. For the "Ballerina Audrey Hepburn" model, an agreement had been reached with the Audrey Hepburn Children's Fund, which permitted this use. For the "Gondoletta" and "Ira" models, the Court agreed with the Court of Appeal's reasoning that the informational function of using Hepburn's name outweighed the commercial function.

This ruling underscores the complexity of balancing commercial and informational interests in the world of fashion and celebrity. We will continue to monitor and report on such developments to keep you informed.

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France

Preliminary reference relating to the trade mark registration which is based on the technical feature of an expired patent

A French company had obtained a European patent for a ceramic composite material with was pink in colour. It believed that the colour was caused by chromium oxide. A few days after the patent expired, its owner filed three EU trade marks, for the pink colour, and covering "ceramic parts for implants" in class 10.

Following the marketing of similar pink coloured products by a competitor, the trade mark owner initiated infringement proceedings before the Paris Court and in several other European countries, including before the Stuttgart Court in Germany.

In a ruling handed down on 25 June 2021, the Paris Court of Appeal cancelled the colour marks on the grounds that they had been filed in bad faith. The Court held that the trade mark owner was trying to extend its monopoly regarding the use of chromium oxide, which at the time it filed the French application, it believed generated the pink colour in its products.

The Stuttgart Court of Appeal held that the form of the trade mark was dictated by the nature of the product and that this constituted an absolute ground under article 7, §1, (e), (ii) of EU regulation CE 207/2009 then applicable (now article 7 EUTMR), as the form of the product was necessary to obtain a technical result.

Given the difference of interpretation between the French and German appeal courts regarding the relationship between the absolute grounds for invalidity referred to in Article 7 of Regulation 207/2009 and invalidity for bad faith under Article 52(1)(b) of the same Regulation, the French Supreme Court referred three questions to the CJEU for a preliminary ruling:

1. Are the grounds for cancellation of a trade mark based on article 7 and the bad faith of the applicant under article 52 (1) (b) mutually exclusive?

2. If the answer to the first question is no, can the applicant's bad faith be assessed by reference to article 7, §1, (e), (ii) of EU regulation CE 207/2009 where it is established that the sign is exclusively composed of the form a product which is necessary to obtain a technical result?

3. Finally, is article 52 (1) (b) to be interpreted as excluding the bad faith of an applicant which has filed a trade mark application with the intention of protecting a technical solution when it is subsequently discovered that there was no link between the technical solution in question and the signs constituting the trade mark applied for?

Although the facts of this case are no doubt very specific, the CJEU's answer will clarify the relationship between absolute grounds for invalidity and invalidity based on bad faith.

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