C h i e v e r Q u a r t e r l y R e v i e w c o n t a i n s a n o v e r v i e w o f s t r i k i n g , i n t e r e s t i n g a n d e n t e r t a i n i n g c a s e s a b o u t t r a d e m a r k s , c o p y r i g h t , d e s i g n s a n d t r a d e n a m e s

Q U A R T E R L Y R E V I E W

Volume 2 no. 3 - 2015

In this issue:No trademark for Monaco

The red sole of Louboutin

No protection for Viagra in Canada

Umbrella squeezes through

Trademark battle Rihanna

Blackmail.sucks

Messi shirts out?!

Pho

to: N

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rspo

rts / Shu

tterstock.co

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No clothing trademark for Messi

I N T H E S P O T L I G H T

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RefusalResearch carried out by Chiever has found that the application has already been refused by the Board of Appeal of the EU Intellectual Property Office, but the ruling had previously been kept out of the media.

No Messi shirtsIt would now be risky for Messi and Bar-celona to market merchandise such as clothing and shoes under the Messi label.

You could even argue whetherit’s legal to sell shirts with the name Messi on the back. These days,of course, merchandise is one of themost lucrative sources of income forclubs and their players.

AppealMessi, whose full name is LionelAndres Messi Cuccittini, has lodgedan appeal.

The European Court of Justice ruled early this year that the word Monaco can’t be registered as a trademark. The principality had applied to have the word registered as an EU Trade Mark for a large number of goods and services.

Geographical territoryAccording to the court, every European understands the word Monaco as a geo-graphical territory from which its pro-ducts come. It added that it was not the

intention that such geographical designa-tions should be claimed as trademarks, even when the applicant, as in this case, was the principality itself.

L’Argentina and Passionately SwissMonaco isn’t the first geographical desig-nation to be scuppered by trademark law. The trademarks L’Argentina (shoes) and Passionately Swiss (catering services) also failed in their registration bids.

Barcelona’s champion footballer Lionel Messi has been told he can’t use his name as a trademark for clothing and sports items. The registrationof Messi as an EU Trade Mark was refused due to the existence of anolder European ‘Massi’ trademark.

Exit Monaco ®Exit Monaco ®

Vox Populi provokes international trademarkassociation INTA with a billboard in San Diego

Blackmail.sucks?Registry Vox Populi, which has is-sued the new .sucks domain name, has attracted heavy criticism due to the high prices it is charging to trade mark owners during the preferen-tial defensive registration period: USD 2,500 a year for ‘yourtrademark.sucks’. If they fail to register, Vox Pop-uli warns, someone else could acquire their domain name for as little as USD 10. Which smacks of blackmail.

ProblemLouboutin has been engaged in a battle for several years with Dutch footwearchain Van Haren, which also sellshigh-heeled shoes with redsoles. If the European Courtrules that the red sole can’t beregistered as a trademark, thenit is likely to open the way foreveryone to market red soles –and that will present Louboutinwith a major problem, in Europe atany rate.

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Photo:Tomislav Pinter,Shutterstock.comRight: Vodka bottleNordic

Louboutin could go to European CourtIt’s still unclear whether fashion designer Christian Louboutin’s famous red soles qualify as a protected trademark. Louboutin has already filed several court cases in the Netherlands and Belgium, resulting in conflicting judgements. On 1 April 2015, theDistrict Court in The Hague announced that itwould be passing the case to the EuropeanCourt of Justice.

The distinctive water bottle made by Norwegian company Voss doesn’t qualify for EU trademark pro-tection because its shape is insufficiently distinctive, according to a ruling by the European Court of Justiceon 7 May.

Loss for Voss

BoomerangVoss brought proceedings against com-petitor Nordic Spirit, accusing it of selling vodka in a very similar-shaped bottle to its own. However, Voss’s attack rebounded on it like a boomerang when Nordic coun-tered that the Voss bottle wasn’t distinc-tive enough and therefore didn’t qualify for trademark protection – an argument the European Court of Justice has now up-held. This leaves Voss without trademark rights. The ruling shows how difficult it is these days to protect your packaging as a registered shape mark.

Marked differencesAccording to the Court, consumers aren’t used to recognising who manufactures a product simply by the shape of the pac-kaging. The shape of the packaging must depart significantly from the norm or customs of the sector if it is to be regis-tered as a trademark.

New cigarettepackagingunder fireTobacco giants British American Tobac-co and Philip Morris have filed a com-plaint to a new UK law which has intro-duced stringent rules for the design of cigarette packaging.

UnlawfulThe new legislation severely curtails the use of brands, colours and ima-ges on cigarette packets, and the two manufacturers say this unlawful-ly deprives them of registered trade-marks and violates both UK and EU law. They are consequently deman- ding compensation.

The new packagingto go on sale in the UK

Since being changed in 2013,cigarette packaging in Australia looks even starker

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Storm umbrellasqueezes through

Older US Design PatentSenz Technologies’ competitor Impliva had filed a cancellation to the the design registration of the umbrella in 2010 after it discovered that a patent application had previously been deposited for a very simi-lar design in the United States. The Court of Appeal ruled at the time that Senz’ um-brella lacked individual character and that its registration was consequently invalid.

Different overall appearanceHowever, the Court of Justice has now de-cided that the overall appearance of the Senz umbrella is sufficiently different from

the older US model to give it individual character after all. It has therefore upheld Senz’s registration. The popular umbrella thus appears to have squeezed through the protection net.

Senz Technologies’ popular storm-proof umbrella can continue to enjoy EU de-sign protection following a ruling by the European Court of Justice on 21 May. The decision overturns a previous judgement from 2012 by the Court of Appeal, which declared the registration invalid.

Right:Senz umbrella.

Left:American

registrationno. 5505221

Six Word Story During the 2014 World Cup, billboard advertising company Interbest placed an ad in de Telegraaf newspaper promoting a writing competition, Six Word Story. The photo of Louis van Gaal which accom-panied the ad suggested that even the national football coach was working on a six-word story entry of his own during the championships.

Financial interest The court ruled that the ad was an in-fringement of Van Gaal’s portrait rights and that he had a financial interest in op-posing it because he would normally be paid for the use of his photo. It is now up to the man himself to argue the size of the

compensation he is paid, which is likely to be between € 50,000 and € 100,000.

Louis van Gaal doesn’t belong to usDutch football coach Louis van Gaal may not have won the 2014 World Cup, but in April this year he did prevail in a court case over the use of his photo.

No cover for Viagra in CanadaThe blue diamond-shaped Viagra pill has been refused trademark protection in Canada. A Canadian court recently ruled that this combination of shape and colour will not be recognised by doctors, phar-macists and consumers as coming from a single manufacturer.

Distinctive status in EuropeThe judgement is surprising since the lozenge-shaped blue pill is regularly cited as the example of a shape that complies with trademark specifica-tions. In Europe, and in France and the Netherlands in particular, Viagra’s manufacturer Pfizer has successfully upheld the distinctiveness of its shape mark on several occasions in recent years.

Benelux trademark registration no. 674 245

Canadian judge doesn’t rate Viagra

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oto: Shutterstock.com

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Rihanna’s trademark battlePop star Rihanna – full name Robyn Rihanna Fenty – has run into trouble with DC Comics, which owns the rights to the Batman comic strips and films.

Robin vs RobynDC Comics is seeking to block a request by Rihanna’s company to re-gister the trademark Robyn in the US for a digital magazine, arguing it is too similar to the name of Batman’s trusty sidekick Robin.

Better late than never: here at last are the results of the 2014 Chiever Letter Quiz. The lucky winners of the € 100 dinner vouchers were Julien Demeijer of Spaces and Richard Smit of het Financieele Dagblad. Congratulations to you both!

TM

Jack Daniels Quantas

Dunlop

Carlsberg

TESLA

twitterDesigual

NETFLIXAXE

American ExpressStabilo

GatoradeBMW

EbayUBER

HasbroColgate

AllianzThe Voice

Instagram Flickr iDeal Mattel NASA MANGO Pepe Jeans

Under Armour vs Ass Armor

Headache

Protect your AssetsAccording to Under Armour, the two trade-marks are very similar, and the name Ass Armor also appears in an identical font to its own. A further objection is that Sherr

has coined a slogan which is a clear vari-ant of Under Armour’s Protect this House: Protect your Assets.

Successful clothing brand Under Armour has brought a case in the United States against snowboarder Casey Sherr, who is marketing sports clothing under the trademark Ass Armor. Under Armour claims that Mr Sherr is infringing its trademark rights and damaging its brand.

Here’s a new headache from Greece: a Greek court has ruled that the green and white packaging used for the analgesic Salospir doesn’t infringe Bayer’s trademark rights to its well-known Aspirin packaging. Get your head around that...

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Chiever contact detailsChiever B.V.Barbara Strozzilaan 2011083 HN AmsterdamThe NetherlandsTel: +31-(0)20-820 40 00Fax: +31-(0)20-820 11 12Mail: info@chiever.comWeb: www.chiever.nl

ConsultantsAlice Slabbaert, partnerBas Kist, partnerVolkert Teding van Berkhout, partnerMaria-Gemma HuijnenAnnette LindemanNeeltje de Gruyter

Trademark AssistantsDaphne AlthoffMarion de BruijnClementine DoodemanAzalia IlahiJudith IrionMarionne MinSylvie PiernazJoke RienksManouk van SantenMarijntje Sitters

OfficeManon Fock, operations managerFabienne Filbry, ass. manager operationsTessa van de Braak, database managerNoah Schuster, team assistant

© Chiever 2015

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Chiever advises companies on the

national and international pro-

tection of their brands, trade na-

mes, copyright and design.

Chiever’s USPs

ChieverBig enough to cope, small enough to care

The latest refused trademark applications

Nicole Kidman triumphs in China

If a trademark is deemed insufficiently distinctive, its registration is refused by the Benelux Office, sometimes justifiably, and sometimes – in our view - not. What is certain, however, is that these days, the rules are tight.

No registration of her own Despite the fact that Kidman herself had not registered her own name as a trade-mark in China, the Board agreed to re-move her slightly corrupted name from the register.

Exact match not required According to the Chinese trademark board, the name Nicol Kidman was close enough to the celebrity’s name to carry with it a risk of confusion. Until recently, well-known people could only file an op-position to the registration of a trademark that was identical to their own name. In 2014, however, the Beijing High People’s Court ruled that in such situations, an ex-act match was not required. Risk of confu-sion is the deciding factor.

Actress Nicole Kidman has successfully filed an application to invalidate the registration of the name Nicol Kidman as a trademark for fashion accessories in China after the Chinese Trademark Office ruled in her favour.

Photo: Featureflash / Shutterstock.com

Chiever says:

The words of the Dutch national anthem as a clothing brand for the Madurodam tourist attraction? Refusal was the right decision.

Applied for by confectioners Frito Lay and undoubtedly intended for their spiral-shaped WOKKEL crisp. We would have let this stand.

Nothing if not an energy supplier from Amsterdam!Rightly refused, we think.

Never likely to have has a chance of being upheld.Applicant FIAT should have known better.

King of Suitcases. A word mark. For suitcases, obviously. Correct decision.

A bit like Wasserette, but for pizzas? Nothing wrong with it, in our view.

LawyerDifferent. A word mark. How else should this lawyer do it? Other than the others? Rightly refused.

Refused application:

VERDRAAID LEKKER(“Twistingly good”)

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