13 July 2018
Three Recent Trademark Cases Covering Electronics, Clothes and Sports Articles Come Under Spotlight
Hong Kong sellers of a variety of consumer goods, from clothes to electronic items and sports equipment, may be interested in three recent cases regarding trademarks and EU law criteria which must be fulfilled in order to register them.
On 24 April 2018, the EU’s General Court ruled on a case between Senetic S.A. v European Union Intellectual Property Office (“EUIPO”) concerning an action for annulment of a decision of the EUIPO to confirm the registration of the trademark “HP.”
In 2015, Senetic had filed an application for a declaration of invalidity of the trademark registration. Following EUIPO’s dismissal of the application, proceedings were brought before the Court by Senetic which sought an annulment.
Senetic’s first argument relied upon a provision from the EU Regulation on the Community trademark. Senetic claimed that the contested mark was invalid as it was descriptive of the technological goods and services in question. The Court found that it cannot be generally asserted that a mark is descriptive simply because it consists of one or two letters, without examining the specific relationship between the sign and the goods and services in question. This finding shows that a level of originality must be displayed by those wishing to apply for a trademark. The mark cannot simply describe the goods or services being provided.
Secondly, Senetic argued that the contested mark lacked a distinctive character contrary to the EU Regulation. However, the Court found that the combination of the two letters is not commonly used or simply perceived as an indication lacking any distinctive character, particularly as the HP sign can be understood by the relevant public as a reference to the company founders, Hewlett and Packard.
Finally, Senetic contended that HP acted in bad faith when it filed the application for the trademark, with a view to preventing other economic operators from using a similar sign on the market. However, no evidence establishing that HP knew that Senetic or any other third parties marketed under a similar or identical sign was found. Furthermore, at the time of filing, Senetic failed to show that a third party was using a similar or identical sign in marketing its goods or services. Thus, the decision of the Court led to a dismissal.
Only days afterwards, on 26 April 2018, the EU’s General Court gave judgment in a case concerning an EU trademark registered by football legend Lionel Messi, opposed by JM-EV e hijos SRL. The latter claimed that there was a likelihood of confusion with their EU word mark “MASSI”.
In August 2011, Messi requested EUIPO to register a European trademark for a number of categories of items, including clothes and other articles for sports and gymnastics. The proposed trademark consisted of the word ‘MESSI’ beneath a stylised letter “M”. The design appears as follows:
On 12 June 2013, EUIPO upheld an objection to the trademark which was filed by JM-EV e Hijos. Messi then appealed this decision, which was subsequently dismissed as unfounded by EUIPO on 23 April 2014. Subsequently, Messi further appealed to the EU’s General Court to have that decision annulled. This particular decision referred to the similarity of certain trademarks and how they translate to the public eye.
First, the General Court acknowledged that both marks had an “average” degree of visual similarity and a “high” degree of phonetic similarity. Secondly, while both marks have Italian connotations or appearances, they are not devoid of meaning to the wider public. Thirdly, the Court found Messi’s media profile to be such that he would be well-known to a significant part of the relevant public, regardless of their interest in football or other sports.
Therefore, the Court considered whether a significant part of the relevant public was unlikely to make a conceptual association between the word “Messi” and the identity of the footballer. The Court held that a reasonably attentive and informed consumer of sports clothing would be aware of a conceptual difference between Messi- and Massi-branded articles.
The Court therefore concluded that, despite a certain level of visual and phonetic similarities between the two marks, there was not sufficient similarity between the two marks, such that a significant part of the relevant public would believe them to belong to the same or linked companies.
Then, on 14 May 2018, the French-language Commercial Court of Brussels ruled in a dispute between Levi Strauss & Co and well-known retailer BV Hema and Hema Belgie SPRL, regarding the similarity of Hema’s logo with that of Levi’s. The logos were as follows:
On 30 October 2015 Levi’s brought an ex parte action before the President of the Court under the Benelux Convention on Intellectual Property (“the BCIP”), which prohibits the use by any third party of signs identical or similar to another’s trademark.
Firstly, the Court found that the use of the contested signs as “decorative” elements and not as a trademark or distinctive sign to be irrelevant since the decorative use of a sign does not preclude a potential trademark infringement.
Secondly, the Court found what it called “significant” disparities between the two signs: Levi’s trademark was composed of two curved lines meeting in the middle of the pocket, whereas Hema’s sign represented three curved lines meeting slightly left from the middle of the pocket.
Thirdly, however, the Court held that there were indisputable similarities that the relevant public would be aware of, inevitably resulting in the likelihood of confusion. The Court added that the relevant products were highly similar.
As a result, the Court agreed with Levi’s and prohibited Hema from using the sign in question. Given the price of the products, the profit margin made by Hema, the importance of Hema’s store network and the quantities which it sold, the Court reduced the penalty payment claimed by Levi’s (from EUR 10,000), to EUR 100, per product, with a cap of EUR 4 million. Damages to the tune of EUR 20 per product were also awarded to Levi’s, with the Court taking into account, among others, the “millions” that Levi’s claims to spend in marketing efforts every year. Finally, the Court refused to order Hema to transfer to Levi’s all profits resulting from the use of the signs at issue, and to provide all accounts in this regard, as Levi’s failed to provide evidence of Hema’s bad faith.