Revocation of Whirlpool’s French 3D trademark

Written by Jean Philippe Bresson Wednesday, 23 June 2010 10:58

Just published is a decision of the Court of First Instance of Paris dated March 16, 2010, which ruled the revocation of Whirlpool’s French 3D trademark (shown below). Whirlpool was suing Kenwood for trademark counterfeiting and Kenwood said the mark lacked of distinctiveness.

The Court said that the overall shape of the mark did not significantly move away from the already existing shapes of the market to consider when the mark got registered. It added that said shape presented all the functional features of the type of products in concerns. The curved aspect of the head of the product was regarded as insufficient to confer distinctiveness to the mark.

Color trademark of socks toe refused to registration

Written by Jean Philippe Bresson Tuesday, 22 June 2010 09:23

The General Court confirmed on June 15, 2010, the previous findings that the figurative trademark shown below and consisting in orange coloring of the toe of a sock could not be registered in class 25 for ‘clothing, namely hosiery, socks and stockings’ because it lacked distinctiveness.

The General Court said that the category of ‘positional marks’ raised by the applicant was not part of the Community Regulation and that anyway would have no incidence on the process to apply to assess the distinctive character of the mark applied for.

Slogans and trademark: new turn in the Community practice

Written by Jun Ito Monday, 08 March 2010 15:32

On January 21, 2010, the CJCE issued a favorable decision for the slogan “Vorsprung durch Technik” (i.e “Advancement through technology”) filed as Community word trademark by AUDI AG in 2003 and covering classes 9, 12, 14, 16, 18, 25, 28, 35, 36, 37, 38, 39, 40, 41, 42, 43 and 45.

The Examiner, then the Second Board of Appeal and then the Court of First Instance had rejected the mark because it lacked distinctiveness. The CJCE set aside and annulled their previous findings and raised that :

• the minimal level of distinctiveness of slogans cannot rely on “imaginativeness” or “conceptual tension creating surprise and so making a striking impression”;
• the perception of a mark as a promotional formula does not exclude it from distinctiveness as long as the public perceive the sign as an indication of the commercial origin or goods or services;
• characteristics such as having a number of meanings, or constituting a play on words or being perceived as imaginative, surprising or unexpected are likely to endow a slogan filed as trademark with distinctive character.

This CJCE decision may likely be a new start for successfully filling slogans as Community trademarks on the basis of a case by case analysis and provided that the Community case law soften the very strict approach which was applied until now.

By the way, our deep study of the situation as to trademarks and slogans will shortly be featured in a next issue of the WIPO MAGAZIN – watch out for it!

“I love my T” lacks distinctiveness in class 25

Written by Jean Philippe Bresson Thursday, 18 February 2010 10:30

Paris First Instance Court, October 30, 2009

We just noticed an interested decision involving ZARA FRANCE. The owner of the word Community trademark I LOVE MY T’s was suing for counterfeiting ZARA FRANCE for having sold some t-shirts bearing I LOVE MY BASIC TEE. The Court said I LOVE MY T’s had not distinctiveness. The wording “I LOVE” in itself was regarded are currently used on the clothing market.

The Court regarded “MY T’s” as an immediate and direct evocation of “my t-shirt”. The action consequently failed. The reasoning is a bit short as the link between “MY T” and “my t-shirt” was not so obvious. Also the choice of using “I LOVE MY BASIC TEE” was not necessarily pure chance considering the mark “I LOVE MY T’s” especially considering that the products were identical.