Legislation & Practice
UK
Tighter scrutiny of trade mark specification exclusions and limitations
The UK IPO issued a Tribunal Practice Notice in July 2024 which provides guidance on the wording of exclusions (negative restrictions) and limitations (positive restrictions) which are added to specifications in order to settle proceedings before the tribunal. The UK IPO is notably stricter in its assessment of exclusion and limitation wording in comparison to the EUIPO and this new TPN provides clarification of what wording will and will not be accepted.
The UK IPO now requires that the restrictive wording meets the following criteria.
The wording must be clear and precise and avoid ambiguous wording such as "ancillary goods/services".
The restriction should identify sub-categories of goods/services, and not characteristics. Examples of unacceptable restrictions are as follows:
- "Bags, all displaying images of cartoon characters", because this restriction relates to the nature of the goods;
- "Clothing, all of the aforesaid being merchandise", because this restriction relates to the way in which the owner intends to market the goods; and
- "Tee shirts, all of the aforesaid being for use by mountain climbers", because this restriction relates to the intended recipient of the goods.
The restriction must be logical. Examples of unacceptable restrictions are as follows:
- "Clothing; t-shirts; leggings; sports clothing; jeans; none of the aforesaid being clothing for sport", because this restriction contradicts a term within the specification; and
- "Sunglasses; all of the aforesaid relating to music", because this restriction seeks to exclude subject matter that does not exist in the first place.
From a practical perspective, the takeaway points are:
Consider the above guidance when incorporating an undertaking to make specification amendments to UK applications and registrations into an agreement which is intended to settle trade mark opposition, revocation or invalidation proceedings before the UK IPO. In the event of a multi-jurisdictional dispute, it may beneficial or necessary for the client to agree on restrictive wording for UK marks which is different to the restrictive wording which will be applied to marks in other jurisdictions if other IPOs are likely to agree to broader wording.
Exclusions and limitations are typically added to the end of a Class. It may be necessary to re-order the terms within the specification in order to apply the wording that has been agreed between the parties. For example, the following restriction is unlikely to be accepted by the UK IPO under the new guidance:
Class 9 - Software; electronic publications; mobile phones; all of the aforesaid goods relating to financial services.
Whereas the following is likely to be accepted:
Class 9 - Software; electronic publications; all of the aforesaid goods relating to financial services; mobile phones.
To mitigate the risk of an objection being raised by the UK IPO in connection with the wording of a specification restriction, consider including a clause within the agreement which requires the parties to work together to agree upon alternative wording should the original wording be refused.
Case law
China
Landmark Case: Recognition of Overseas Use Evidence in "V7 Toning Light" Trade mark Invalidation Dispute
In a significant ruling by the Beijing High People's Court, the "V7 Toning Light" trade mark invalidation case has set a precedent for recognizing overseas use evidence in supporting claims of prior use and influence within China. The case centered around the trade mark "V7 Toning Light", registered by a Chinese firm Guangzhou Hanhuijiaoren Cosmetics Co., Ltd. (Guangzhou Hanhuijiaoren). The Korean firm Have & Be Co., Ltd. (Have & Be) filed an invalidation against the disputed mark, presenting evidence of prior registration, use and promotion of the same trade mark in Korea. The China National Intellectual Property Administration (CNIPA) declared the trade mark invalid, a decision upheld by both the Beijing Intellectual Property Court and the Beijing High People's Court.
The court made several critical observations. It noted that both companies operate in the same industry and that the goods covered by the disputed trade mark, such as "facial cleansers, cosmetics, toothpaste," overlap with the "cosmetics" products used for Have & Be's "V7 Toning Light" brand. Additionally, the "V7 Toning Light" trade mark is a coined term, with Guangzhou Hanhuijiaoren providing no reasonable explanation for registering a trade mark identical to that used earlier by Have & Be. The court highlighted the subjective bad faith demonstrated by Guangzhou Hanhuijiaoren in leveraging the reputation of Have & Be's products during their actual use of the disputed mark. Importantly, the court emphasized that in the digital age, Chinese consumers are frequently exposed to international brands through online platforms, cross-border shopping, and social media. This exposure means that overseas use and promotion of a trade mark can significantly influence Chinese consumers. Have & Be provided evidence such as beauty blogger posts, purchasing articles, and comments related to "V7 Toning Light" products, which demonstrated that Chinese consumers had a certain level of awareness and recognition of the "V7 Toning Light" face cream before the application date of the disputed trade mark. Consequently, the court concluded that Have & Be's "V7 Toning Light" trade mark had already been used in China and had gained certain influence before the application date of the disputed trade mark.
This decision is good news for foreign brand owners seeking to retain control of their mark in China.
Read English and Chinese versions.
Singapore
Bytedance Ltd v Dol Technology Pte Ltd [2024] SGIPOS 5
In the case of Bytedance Ltd v Dol Technology Pte Ltd [2024] SGIPOS 5, it was held that the Opponent's word mark (i.e. "TIKTOK") is well known to the public at large in Singapore. When coming to this conclusion, the adjudicator gave regard to worldwide articles that did not originate in Singapore and did not give a country-by-country breakdown of the relevant figures. The relevant articles stated among other points, that (a) the Opponent had been valued as the world's largest internet start-up, (b) that TikTok's monthly active users increased from 85 million in the first quarter of 2018 to 812 million in the first quarter of 2021 and (c) that the TikTok App was installed on devices more than three billion times worldwide as at mid-2021.
The adjudicator commented that while evidence from overseas, as a general position, would not be relevant in assessing whether a mark is well known to the public at large, in the present case, the evidence establishes that the Opponent's "TikTok" brand is one of the most recognised in the world. Further, as Singapore is a nation that is well-connected globally, and the average consumer in Singapore is "well-travelled and reasonably well-informed", details of the world's most valuable start-up are details which the average consumer in Singapore would be aware of.
This case is significant as allows adjudicators to consider and accept global evidence in determining whether or not a mark is well-known to the public at large, provided that such evidence convincingly establishes a mark's worldwide recognition. This approach acknowledges the global nature of commerce and the internet, enabling parties to circumvent the potential challenge of obtaining Singapore-specific data to substantiate the well-known status of a mark.
Germany
The photograph 'Sprung in die Freiheit' cannot be registered as a figurative trade mark
The Federal Patent Court (BPatG) ruled on 18 March 2024 (case no. 29 W (pat) 509/21) that the photograph entitled 'Sprung in die Freiheit' cannot be protected as a trade mark. However, this has no effect on the existence of any other legal regimes for the protection of intellectual property.
The BPatG stated as reasons for the refusal of trade mark protection that the figurative sign had no distinctive character for certain goods, with the consequence that registration of the trade mark as a sign was not possible. The relevant public would, if they encountered the figurative sign applied for in connection with the goods claimed, merely see it as an indication of content or subject matter or recognise the well-known photograph 'Sprung in die Freiheit' and see it merely as a decorative element. Even in the event that the photograph has developed into a generally relevant advertising motif, it still has a special symbolic content or historical impact. In contrast, the relevant public would not recognise a reference to the commercial origin of these goods.
In principle, images of persons - such as portraits - can also be treated as names and thus be distinctive. However, according to the BPatG, this does not lead to a different assessment for the categorisation of the photograph 'Sprung in die Freiheit', as only the photograph only represents an indication of content or subject matter or a theme. Copyright, patent or naming rights also do not necessarily allow the conclusion that a sign is distinctive under trade mark law, as the trade mark right creates an additional right that is independent of the existence of other legal protections.
The decision underlines the importance of the distinctive character of trade marks and shows that not every figurative sign can automatically be protected as a trade mark. In addition, the decision clarifies the independence of trade mark law from other legal regimes such as copyright, patent or name rights to a sign.
EU
General Court partially cancels McDonald's "BIC MAC" trade mark
The General Court was invited to assess whether the famous "BIC MAC" trade mark was subject to revocation for lack of genuine use for chicken or poultry-based food, for "foods prepared from meat products" and "edible sandwiches" and for class 42 restaurant related services.
It this case, the Court considered that the evidence of genuine use provided by MacDonald's was lacking for all goods and services except "foods prepared from meat products" and "edible sandwiches". Indeed, the General Court ruled that the evidence provided to demonstrate genuine use of the mark to designate chicken based Big Mac chicken sandwiches was not satisfactory as it was mainly based on internal documents or pieces of evidence dated by hand. Additionally, the Court held that the sales figures for Bic Mac in the EU did not demonstrate genuine use for chicken sandwiches either, insofar as they did not distinguish between the classic Big Mac and the Chicken Big Mac.
As regards class 42 services, the General Court held that evidence of use of the Bic Mac beef sandwich could not be used as evidence of use for services related to restaurants and franchises.
This decision clearly distinguishes between the appreciation of the genuine use of a mark for specific goods and services and the appreciation of its overall reputation. In doing so, it confirms that trade marks with a reputation remain subject to use requirements just like "ordinary" marks. It also serves as a reminder that the demonstration of genuine use requires precise, trustworthy, and properly dated evidence, applicable to each good or service distinctively.
EU General Court on the interpretation of the relevant public
On 10 July 2024, the General Court delivered a judgment on an opposition between two figurative trademarks, both including a word in Arabic that translates to "lion". The General Court considered that "even though the goods in question are teas which are not necessarily specifically aimed at that community, it cannot be ruled out that [the Arabic] community is part of the relevant public".
This case is significant for its recognition of Arabic-speaking consumers in the European Union as part of the relevant public, despite Arabic not being one of the EU's official languages. This approach aligns with a precedent set by the Court of Justice (case C-147/14), which, in a preliminary ruling, determined that national judges could consider the relevant public's basic understanding of written Arabic in cases involving EU trademarks and signs.
The judgment underscores the importance of accurately defining the relevant public in trademark disputes. The court's decision highlights that providing evidence of the demographics and language proficiency of the relevant public might significantly influence the outcome of the assessment of the likelihood of confusion between two EU trade mark.
EUIPO assessing similarity between real-world and virtual goods in trade mark oppositions
In a recent landmark decision, the EUIPO Opposition Division has tackled a brand-new issue in trademark law: the evaluation of the similarity between tangible goods and their virtual counterparts, specifically non-physical products designed for use in online commerce or virtual environments, alongside related services.
This decision emerged from the opposition proceedings initiated by Artessence FZC against the European Union trade mark application for "Vinicio" submitted by an Italian retailer. The application encompassed a variety of products and services, including "retail services in relation to virtual goods such as soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, beauty and care preparations for the body, deodorants, joss sticks, pot-pourri and bags, kits and gift sets containing skin, hair and/or nail care preparations, the aforesaid goods for use in virtual reality". The opposition was based on the prior trade mark "Initio Parfums Privés" which covers, among others, products in Class 3, including "Soap; perfumery, essential oils, cosmetics, hair lotions; dentifrices; cosmetics; antiperspirants [toiletries], joss sticks, potpourris and sachets, kits and gift sets containing skin, hair and/or nail care preparations".
Initially, the Office acknowledged that virtual products represent a new reality for which there is not yet a market practice that can provide guidance in assessing the similarity between products. Therefore, it stated that in comparing tangible and virtual goods or services, standard factors such as their nature, intended purpose, method of use, whether they are in competition or complementary, and their distribution channels should be considered.
The Office observed that the opponent's argument of similarity was solely based on the premise that the goods protected under the earlier trademark in Class 3 are tangible equivalents of the virtual goods associated with the contested retail services. However, the Office concluded that the mere fact a product serves as a virtual equivalent to a tangible good does not automatically establish similarity.
The decision is of particular importance since it emphasized the critical role of evidence and information provided by the parties in determining the case's outcome. In fact, given that the opponent did not present substantial evidence beyond a basic assertion of equivalence between the tangible goods cited in the prior trademarks and the virtual goods in the opposed trademarks, the Opposition Division dismissed the opposition for the products and services in question.
EUIPO Board of Appeal, 05 August 2024, R 1839/2023-5
In opposition proceedings relating to the LANCOME word and device marks which include a stylised rose design, the EUIPO Board of Appeal provides further insights into its approach to the concept of reputation for word and device trade marks.
The opponent relied on its earlier Lancôme marks, which all included the stylised rose device, and submitted new evidence regarding the reputation of the rose logo, including worldwide brand rankings, media articles, and marketing materials, all designed to show that the rose logo is a highly recognized brand in the cosmetics sector. This provided the Board with the opportunity to clarify certain points regarding reputation for word and device trade marks:
The Board found that these materials demonstrated the reputation of the word "LANCÔME" within the earlier marks but not that of the rose device alone, or even in combination with other elements. Certain documents did not include the rose device and awards won by L'Oréal and a legal counsel's affidavit were disregarded, as they lacked specific references to the rose device. Articles and online searches related to 'Lancôme' were rejected because they did not associate the rose symbol with the brand. Although some articles discussed the rose as an emblem, they were illustrated by different rose devices.
Ultimately, the Board concluded that while some use of the rose device was demonstrated, the evidence failed to establish its enhanced distinctiveness or reputation, highlighting that most of the evidence focused on the "Lancôme" word mark, not the rose device. The Board particularly emphasized that the opponent needed to provide evidence showing that the public specifically associates the rose device with the Lancôme brand, whereas the rose device was not prominently used in ways that would establish a reputation independent from "Lancôme".
In conclusion, the Board found that the opponent failed to meet the burden of proof for establishing the reputation of the rose device under Article 8(5) EUTMR, and as a result, the claim that the contested mark would unfairly benefit from or harm the earlier marks was rejected and the opposition failed.
This decision details the EUIPO's approach to the reputation of word and device trade marks. Indeed, even when associated with a well-known word mark, a device element used will not necessarily benefit from the reputation of the word mark, and trade mark owners must demonstrate that the device element has also acquired a certain degree of reputation in its own right.
Copyright bonus from Luxembourg
Luxembourg Court of Appel, 8 May 2024, copyright infringement case
On 8 May 2024, the Luxembourg Court of Appeal delivered a ruling in favour of the renowned photographer Jingna Zhang whose photograph has been closely mirrored by a Luxembourg painter.
The dispute centred around an original photograph which featured a young woman in a three-quarter view from the back. Whereas the district court at first instance had considered that the photograph was not sufficiently original to be protected by copyright, the Court of Appeal overturned the decision, recognizing the photograph's originality and its qualification for copyright protection based on its unique expression of colours, lighting, and detailed post-production work by the photographer.
The Court also refuted the argument that the digital nature of the photograph negated its eligibility for copyright protection. As a result, Luxembourg painter was found to have infringed upon Zhang's copyright by creating and exhibiting the painting. He has been prohibited from displaying or selling the painting.
The case has drawn considerable attention on social media and in Luxembourg's press, highlighting the robust copyright protections afforded to art photography.
