TRADEMARKS IN THE NEWS
- EUROPEAN TRADEMARKS IN DANGER?
- Spinning' has become a generic term
- Opel vs. Autec
- PEPSI versus ÍPSEI
EUROPEAN TRADEMARKS IN DANGER?
European trademarks registrations are very popular with trademark holders because of the relatively low tariff. This popularity will probably decline after the opposition decision of the Benelux Office for Intellectual Property ("BOIP") in respect of the cases ONEL against OMEL.
Onel trademarks, a member of the Knijff Group, was confronted with a trademark OMEL in the Benelux and filed an opposition against this trademark on the base of their European trademark ONEL. While it was undisputed that Onel trademarks had used its trademark genuinely in the Netherlands, the counter party Hagelkruis Beheer B.V. argued that use of the trade mark in one country was insufficient to constitute genuine use.
The BOIP states in its decision that, in order to successfully base a trademark claim on an European trademark, this trademark should be used in more than one country alone. Use in the Netherlands was considered to be insufficient.
The requirements with respect to the geographical use of a European trademark set by the BOIP are rather severe. This decision can cause problems for owners of European trademarks that are used solely in one country of the Community.
Onel trademarks will appeal this decision.
Read more about this exciting case here.
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Spinning has become a generic term
District Court of The Hague, April 29, 2008. Mad Dogg Athletics, Inc. versus Batavus B.V.
Mad Dogg is owner of the trademarks SPIN, SPINNER and SPINNING and uses the marks in respect of 'bicycle fitness', a concept invented by the American Johnny Goldberg. Batavus sells bicycles under the name "Ultimate Spinning S3" and uses the word "spinner" in this regard. Mad Dogg claims that Batavus infringes their trademark rights.
Batavus defends by stating that Mad Dogg's trademarks have become generic terms and that Mad Dogg can therefore not derive any rights from them; after all, if the trademark owner is to blame that the trademark has become a generic term, the trademark registrations can be cancelled in court.
The court agrees with Batavus: Mad Dogg's trademarks have become generic, however, Mad Dogg is not to blame for this. The trademarks are therefore not being cancelled. They do, however, have a (very) limited scope of protection. Although, Mad Dogg still has valid trademark registrations, Batavus does not infringe these rights according to the court.
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Opel vs. Autec
In 2004, Adam Opel AG became aware of the fact that Autec AG was selling a toy remote-controlled scale model car of the Opel Astra V8 Coupé on the German market. The model is a close copy of the "real" Opel Astra V8 Coupé and the Opel symbol is clearly visible on the radiator grille.
Opel summons Autec for the Landgericht in Nurnberg-Furth and states that Autec infringes its trademark rights. Opel has also registered its mark for 'toys'. The Landgericht questions whether the use of Opel-logo on a model car should be regarded as trademark use and lays this question before the European Court of Justice.
The Court reaches a remarkable conclusion. It emphasises that the relevant public does not perceive the sign identical to the Opel logo appearing on the scale models marketed by Autec as an indication that those products come from Adam Opel or an undertaking economically linked to it. In other words, the trademark owner must prove that there is a likelihood of confusion regarding the origin of the products, in this case, the model cars. Since the Court is of the opinion that such confusion is not present in this case, Autec is not infringing Opel's trademark rights.
Until recently, when third parties used an identical mark for identical products or services, trademark infringement was immediately accepted. Now it seems that it is becoming a bit more difficult for the trademark owner: he will have to prove that it is likely that the public will be confused with regard to the origin of the goods or services.
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PEPSI versus ÍPSEI
Interim injunction proceedings before the The Hague court on December 6, 2005; Pepsico, Inc. and Seven-Up Nederland B.V. versus The Coca-Cola Company
Pepsico has summoned The Coca-Cola Company for the use of the name ípsei for a non-alcoholic drink. Ípsei is a red colored drink containing, amongst others, the extract of red grapes. Pepsico is of the opinion that the sign ípsei is confusingly similar to their mark PEPSI. The court, however, does not agree. In their view there is no visual or phonetic similarity between the registered mark PEPSI and the sign ípsei as used by The Coca-Cola Company. The relevant public will not associate nor confuse the marks in question. Pepsico's claims are dismissed.
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