15 December 2017Trademarks

Four EU General Court rulings from this week and why they matter

This week we reported on four rulings by the EU General Court. Below we explain why they are important.

Hard to believe

Sony was handed victory at the EU General Court on Tuesday, December 12, after the court reversed a revocation of Sony’s trademark.

What is surprising, said Simon Miles, partner and head of IP at Edwin Coe, is the fact that the case reached the court, because Sony submitted so much evidence to prove use of its mark.

‘Vita’ was the mark at the centre of the clash—Sony claimed it had used the mark for its handheld gaming console PlayStation Vita (also identified by the sign ‘PSVita’) and for games and accessories related to it.

In the judgment, the court provided clarification on the need for the European Union Intellectual Property Office’s (EUIPO) Board of Appeal to set out the “facts and legal considerations which have decisive importance in the context of that decision”.

That’s not all—the court highlighted a number of inconsistencies within the contested decision, explained Miles.

“Furthermore, no explanation as to the rationale behind the EUIPO’s refusal to accept the applicant’s evidence establishing the use of the sign ‘PSVita’ on video games to be played on the console of the same name was provided in the decision but was explained in retrospect at the hearing,” he noted.

Importance of deadlines

The recent stand-off between BitTorrent, the company behind the peer-to-peer file-sharing protocol of the same name, and Germany-based Hochmann Marketing should serve as a warning to trademark owners.

“The decision of the EU General Court is a reminder to trademark proprietors (and their representatives) of the consequences of missing a deadline for filing evidence of use at the EUIPO,” explained Peter Brownlow, partner at Bird & Bird.

Hochmann, previously known as Bittorrent Marketing, had applied to annul a decision which revoked the mark ‘bittorrent’.

The German company had submitted a five-page letter by fax, but failed to attach 69 pages of evidence to the EUIPO in time.

Hochmann appealed to the General Court after the EUIPO found that the company had failed to file any relevant proof of use, but the court backed the EUIPO.

Brownlow added that the General Court set out the different circumstances in which late evidence can be filed, something that proprietors in this unfortunate position might find useful.

Well-established rules

Earlier this week, WIPR reported on a trademark clash between a Polish publishing company and German fashion firm that played out before the General Court.

Unfortunately for the Polish company, For Tune, the court rejected its four-pronged argument that it had hoped would undo a decision by the EUIPO which had rejected its mark.

For Tune had sought registration of a mark consisting of two signs: the word ‘opus’ in blue and the letter ‘o’ in white inside a blue rhombus, and the word ‘aeternatum’ in black, upper-case letters.

Fashion company Simplicity trade had opposed the mark, based on its earlier mark ‘Opus’.

According to Ulrike Grübler, partner at DLA Piper, the decision confirms some well-established rules ‎that apply to the comparison of marks, “in particular the rules under which one word element in a combined word/device mark may be regarded dominant and how marks consisting of various word elements may be in general perceived by the consumer”.

In this case, the EUIPO had found that the word ‘opus’ was dominant, a finding that was backed by the General Court.

Skin of its teeth

Yesterday, December 14, Bet365 was on the receiving end of a mixed ruling from the EU General Court.

The court annulled the part of an earlier ruling which stated that the mark ‘Bet 365’ was descriptive and had not acquired distinctive character in class 41, covering betting services. It left the remaining part of the decision, focusing on five other classes, intact.

“It only won there by the skin of its teeth,” explained Bill Lister, partner at Fieldfisher.

“The interesting finding was that a mark which might otherwise have been descriptive and lacked distinctiveness as at the date of registration may nevertheless be regarded as valid if it had subsequently acquired distinctiveness through use.”

Initially the company’s application was for classes 9, 28, 35, 38, 41 and 42 for its online betting service. The General Court only annulled the ruling on descriptiveness covering class 41, titled “Provision of betting, gambling and gaming services through physical and electronic sites and telephonic centres”.

Lister continued: “What the decision emphasises is the necessity of submitting as much evidence of prior use from all possible sources, including website use. The more, the better.”

Jo Eales, associate at Taylor Vinters, explained that it was good news for Bet365 since class 41 covers its "core services".

"The long-running dispute generally highlights that trademarks (even if registered) are not always safe. Also, it shows that trademark owners can usually expect an uphill battle in proving acquired distinctiveness through use in the EU in the context of an arguably 'descriptive' mark," she added.

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