Gli impedimenti assoluti: l’assenza di capacità distintiva – Pagina 2

Perplessa decisione di assenza di confondibilità tra due marchi figurativi UE rappresentanti un leone

I marchi a paragone:

Qui sopra il marchio chiesto in registrazione e sub iudice

Qui sopra invece l’anteriorità oppostagli

Merceologicamente sovrapponibili quasi del tutto.

L’appello amminstrativo ravvisava confondibilità e accoglieva l’opposizione basata sull’anteriorità.

Il Tribunale 20.12.2023, T-564/22,. Pierre Balmain c. EUIPO-Story Time, invece, la esclude per la debolezza del marchio anteriore, annullando la decisione del Board of appeal.

Ecco la sintesi finale:

<<The global assessment of the likelihood of confusion

77 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered by those marks. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

78 Furthermore, the degree of distinctiveness of the earlier mark, which determines the scope of the protection conferred by that mark, is one of the relevant factors to be taken into account in the context of the global assessment of the likelihood of confusion. The more distinctive the earlier mark, the greater will be the likelihood of confusion, with the result that marks with a highly distinctive character, either per se or because of their recognition on the market, enjoy broader protection than marks with less distinctive character (judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24, and of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; see also judgment of 29 March 2023, Machková v EUIPO – Aceites Almenara (ALMARA SOAP), T‑436/22, not published, EU:T:2023:167, paragraph 96 and the case-law cited). However, in the light of the interdependence between the factors to be taken into account, the existence of a likelihood of confusion cannot automatically be ruled out where the distinctive character of the earlier mark is weak (see, to that effect, judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 70 and the case-law cited).

79 In practice, where the earlier mark and the mark applied for coincide in an element that is weakly distinctive with regard to the goods or services at issue, the global assessment of the likelihood of confusion does not often lead to a finding that such a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, exists (judgments of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 55; of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 53; and of 18 January 2023, YAplus DBA Yoga Alliance v EUIPO – Vidyanand (YOGA ALLIANCE INDIA INTERNATIONAL), T‑443/21, not published, EU:T:2023:7, paragraph 121). Where the elements of similarity between two signs at issue arise from the fact that they have a component with a low degree of inherent distinctiveness in common, the impact of such elements of similarity on the global assessment of the likelihood of confusion is itself low (see judgments of 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 79 and the case-law cited, and of 20 January 2021, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO – M. J. Dairies (BBQLOUMI), T‑328/17 RENV, not published, EU:T:2021:16, paragraph 64 and the case-law cited).

80 In paragraphs 45 to 50 of the contested decision, the Board of Appeal found that, in the light of the identity or various degrees of similarity, from low to high, of the goods at issue, the average degree of visual similarity and conceptual identity between the marks at issue and the average degree of inherent distinctiveness of the earlier mark, the relevant public, the level of attention of which varied from average to high, was likely to believe that the goods covered by those marks came from the same undertaking or, as the case may be, from economically linked undertakings. It added, in paragraph 52 of that decision, that its assessment would not have been different if it had found that the figurative element representing a lion’s head in the earlier mark, or even that mark taken as a whole, had only a low degree of inherent distinctiveness, in the light of the dominant nature of that element in that mark and the interdependence between the various factors to be taken into account in the global assessment of the likelihood of confusion. It took the view that those assessments were not contrary, in the circumstances of the case, to the case-law of the Court of Justice and the General Court.

81 By its fourth complaint, the applicant disputes, in essence, the Board of Appeal’s assessment that there is a likelihood of confusion in the present case. It submits that the marks at issue, although they both consist of the representation of the same concept, namely a lion’s head, create a different overall impression in the mind of the relevant public. In that regard, it relies on the fact that the representation of such a concept is banal and commonplace in the fashion sector and that the earlier mark has only a low degree of inherent distinctiveness, which, in combination with the other factors in the present case, should have led the Board of Appeal to rule out the existence of a likelihood of confusion.

82 EUIPO disputes the applicant’s arguments. However, in the alternative, should the Court take the view that the earlier mark has a low degree of inherent distinctiveness, it states, in essence, that it endorses the applicant’s claim for annulment on the basis of the single plea in law relied on by the applicant, in accordance with the case-law of the Court of Justice and the General Court which ensures that marks with a low degree of inherent distinctiveness are not overprotected (see paragraph 79 above).

83 In that regard, it must, first, be borne in mind that the Board of Appeal made an error of assessment in finding that the earlier mark had an average degree of inherent distinctiveness, whereas that degree of inherent distinctiveness could only be categorised as low (see paragraph 75 above).

84 As regards the applicant’s argument that the Board of Appeal gave undue importance, in the contested decision, to the conceptual identity between the marks at issue in the context of the global assessment of the likelihood of confusion, it must be borne in mind that, according to the case-law, the purchase of goods in Classes 14 and 25 is based, in principle, particularly on their visual aspect. Clothing and clothing accessories, the purpose of which is to embellish the appearance of the human body, are generally marketed in ‘bricks and mortor’ shops or online shops, as the case may be with the help of sales assistants or advisers and, in the light of those particular marketing conditions, the consumer’s choice is mainly made by looking at them. Consequently, the marks covering those goods will normally be perceived visually prior to or at the time of purchase, with the result that the visual aspect is of greater importance in the global assessment of the likelihood of confusion (see, to that effect, judgment of 18 May 2011, IIC v OHIM – McKenzie (McKENZIE), T‑502/07, not published, EU:T:2011:223, paragraph 50 and the case-law cited).

85 In the present case, in the global assessment of the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, the Board of Appeal, by finding that there was a higher than average degree of overall similarity between the marks at issue, attached more importance, in paragraph 49 of the contested decision, to the conceptual comparison of those marks than to the visual comparison, in particular in so far as it found that the differences in the stylisation of the marks were of limited importance in the overall impression created by those marks and therefore did not have sufficient impact to assist consumers in decisively distinguishing between the marks.

86 In so doing, it attached too much importance to the conceptual identity between the marks at issue, since, first, and as is apparent from the case-law cited in paragraph 84 above, the choice of the goods at issue is based mainly on their visual aspect and, secondly, the concept represented in the marks at issue, namely a lion’s head, is used in a banal and commonplace way in the commercial presentation or the decoration of goods in the fashion sector.

87 Consequently, the second part of the second complaint must be upheld and the examination of the present action must be continued by taking into account the error of assessment thus noted.

88 In the light of the case-law cited in paragraphs 78 and 79 above and the finding, made in paragraphs 50 and 51 above, that the representation of a lion’s head is a banal and commonplace decorative motif in the fashion sector, in which consumers are regularly faced with such a motif in the commercial presentation or the decoration of the goods, with the result that that motif has lost its capacity to identify the commercial origin of those goods, it must be held that, even though the marks at issue are conceptually identical, that can be of only limited importance in the global assessment of the likelihood of confusion, since the concept in common to which those marks refer is only weakly distinctive in relation to the goods at issue and can therefore contribute only to a very limited extent towards the function of a mark, which is to identify the origin of those goods and to distinguish them from those with a different origin (see paragraphs 47 and 52 above).

89 In view of the weak distinctive character of the concept which is common to the marks at issue and the weak distinctive character of the earlier mark, considered as a whole, the fact that the marks at issue are visually similar to an average degree was not sufficient to enable the Board of Appeal to find, in the contested decision, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, even if the goods at issue were identical.

90 Consequently, the applicant’s fourth complaint must be upheld, inasmuch as the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

91 In view of all of the foregoing considerations, the single plea put forward by the applicant must be upheld, in so far as it is based on the third complaint (see paragraph 76 above), on the second part of the second complaint (see paragraph 87 above) and on the fourth complaint (see paragraph 90 above) and the contested decision must therefore be annulled in so far as the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001>>.

Sono perplesso sia sulla banalità del segno anteriore, che sulla scarsa somiglianza tra i due segni: quindi complessivcamente pure sul giudizio del Tribunale.

(segnalazione di Anna Maria Stein in IPKat)

Il marchio TEAM USA per gioielli, abbigliamento, borse, è sufficientemente distintivo

Marcel Pemsel su IPkat ci notizia della decisione 14.,11.2023 del 4 board of appeal EUIPO case R 1128/2023-4, .United States Olympic and Paralympic Committee, circa la distintività del marchiio denominativo TEAM USA poer prodotti in classe 14, 18, 21 e 25.

In primo grado la domanda di registrazione è respinta ma è accolta in appello.

<<18 The mark for which protection is sought consists of the expression ‘TEAM USA’. The
examiner held that the entire European Union public would understand this expression as
having the following meaning: a group of players representing the United States of
America in a competitive game or sport, which as such is not contested by the IR holder.
19 The examiner, based on the dictionary definitions of the terms ‘TEAM’ and ‘USA’,
assumed that the expression ‘TEAM USA’ was a banal statement indicating information
about an aspect of the goods in question namely that the goods for which protection is
sought may be either used by a group of USA players during a competition, or be
distributed as promotional products or sold during competitions and/or sporting event>>

Ed ecco il dissenso :

<<22 Indeed, the examiner’s reasoning that since all the goods in question can either be used by
a group of US players during a competition or be distributed and sold during competitions
and/or sporting events, the mark for which protection is sought would be perceived by the
relevant consumer as a non-distinctive indication of an aspect of the goods and not as an
indication of their commercial origin cannot be followed. The Board also fails to
understand why the perception of the sign ‘TEAM USA’ as ‘an indication of the
provenance of a group of players’ prevents it from being able to function as a commercial
badge of origin for the goods concerned.
23 The expression ‘TEAM USA’ does not convey any concrete information evoking the
goods in question, namely jewellery items, backpacks and bags, mugs, glasses and water
bottles, as well as clothing articles. None of the examples given by the examiner can
demonstrate that the expression ‘TEAM USA’ is perceived by the relevant public as a non-
distinctive, frequently used or banal statement for jewellery items in Class 14, mugs,
glasses and empty water bottles in Class 21, backpacks and bags in Class 18 or clothing
articles in Class 25.
24 The expression ‘TEAM USA’ as a whole has the minimum degree of distinctiveness
required under Article 7(1)(b) EUTMR for the goods concerned. The registration of a sign
as a trade mark is not subject to the establishment of a certain level of creativity or artistic
imagination on the part of the IR holder, but to the sole ability of the sign to individualise
the goods of the IR holder in relation to those offered by its competitors (24/03/2021,
T-93/20, Windsor-castle, EU:T:2021:164, § 22). The mark for which protection is sought
allows the relevant consumer to distinguish the goods concerned from those of other
undertakings without conducting any analytical examination and without paying particular
attention.
25 The internet links provided by the examiner insofar as they use the expression ‘TEAM
USA’ as a whole refer to the team of top players representing the USA at particular sports
events. The name of a sports team is not excluded, in principle, from the signs capable of
constituting a European Union trade mark, as it follows from Article 4 EUTMR. In this
particular context, the mark ‘TEAM USA’ is likely to be used for goods that are typical
merchandising and souvenir articles, and therefore to designate that they are manufactured,
marketed or supplied under the control of the IR holder, to which responsibility for their
quality can be attributed. The mere affixing of the mark for which protection is sought on
the goods in question enables those goods to be distinguished from other merchandising
and souvenir articles sold or provided by other undertakings (06/09/2018, C‑488/16 P,
NEUSCHWANSTEIN, EU:C:2018:673, § 65-66; 05/07/2016, T‑167/15,
NEUSCHWANSTEIN, EU:T:2016:391, § 43).
26 Thus, the mere fact that the mark for which protection is sought may represent or coincide
with the name of a sports team, in this case the team of top players representing the USA
at particular sports events, does not preclude, as such, its registration. The need to keep a
certain sign free for competitors is, in principle, not an interest protected under
Article 7(1)(b) EUTMR, but rather of other absolute grounds, such as Articles 7(1)(c), (d)
or (e) EUTMR. As regards names, and this could apply also to the name of a sports team,
the interest not to monopolise a name independently of its distinctive character is not an
interest protected under Article 7(1)(b) EUTMR (16/09/2004, C‑404/02, Nichols,
EU:C:2004:538, § 31).
27 The examiner provided no other reason, nor can the Board see why the mark for which
protection is sought should be considered to be lacking distinctive character for the goods
in question. The sign does not lack distinctive character under Article 7(1)(b) EUTMR>>

La decisione pare tutto sommato condivisibile.

Pemsel non la pensa così: <<In this sense, the sign ‘TEAM USA’ either describes that a team based in the US is responsible for the goods in question or that the goods are meant for people supporting the USA. Both meanings appear to be non-distinctive. The fact that they are rather vague is not decisive (see e.g. T-81/13 at para. 20)>>

Al contrrio il segno non pare evocare alcuna assunzione di responsabilità in capo a chicchessia per i beni nè allusioni ad una qualche oggettiva (e non solo creata dal marketing) idoneità per i tifosi USA

Servizi di modella/mannequin offerti tramite marchio costituito da fotografia di una di esse: è distintivo?

Il viso di modella per ‘services of mannequins and photo models for publicity or sales promotion’ in class 35 and ‘model and mannequin services for leisure or recreational purposes’ in class 41, è sufficientemente distintivo?

L’ufficio UE dice di no in primo grado (art. 7.1.b EUTMR), di si in appello.

Dal 4° Board of appeal EUIPO 30.10.2023 , caso R 1266/2023-4, Roos Abels Holding B.V. (segnalazione e link di Marcel Pemsel in IPKat, che segnala altra decisione con motivaizone uguale in fattispecie sostanzialmente uguale):

<<19 It is true that, although special or original characteristics are not criteria for the distinctive character of a trade mark, the mark in question must enable the public to distinguish the goods and services in question from those of other undertakings or persons (04/07/2017, T-81/16, a pair of curved strips on the side of a Tire, EU:T:2017:463, § 49).
20 The Board of Appeal considers that this is the case with the sign applied for. The image at issue, as also indicated by the examiner, consists, taken as a whole, of the faithful representation of a woman’s head/face, in common colours and on a common background.
Contrary to the view taken by the examiner, that image does indeed enable the relevant public, consisting of the general public and a specialised public, to distinguish the services in question from those of a different commercial origin and, in particular, as originating from the specific person depicted.
21 Themere fact that a photograph is a natural faithful representation of what has been depicted does not mean that that representation cannot be perceived as a trade mark, all the more so since the image in itself does not say anything about the services sought. The sign applied for relates, undoubtedly, to the representation of the face of a particular person, with its unique faces, that is to say, its specific external features and that is to say, in the form of a passport photograph. In addition to (inter alia) the surname and first name, the representation of the face in the form of a passport photograph applies to the identification of a person and thus to his or her distinction from other persons. Whether the person can actually be named when viewing the image because it is known to the
relevant public does not alter this.
22 In the view of the Board of Appeal, the representation at issue is therefore capable of fulfilling the essential function of a trade mark in order to distinguish the services applied for from a different origin, as repeatedly held in relation to comparable trade marks. The Chamber refers in this regard to the decisions of 16/11/2017, R 2063/2016-4, device (PHOTO) OF THE HEAD OF A Woman, § 37; 23/10/2019, R 2574/2018-1, FOTOGRAFÍA AND COLOR DEL ROSTRO DE UNA PERSONA, § 14-15; 19/05/2021, R 378/2021-4, WEERGAVE OF THE face OF A PERSOON (fig.), § 17; 19/05/2021, R 468/2021-4, WEERGAVE OF A PERSOON (fig.), § 17). All those decisions concern similar figurative marks for, inter alia, similar or even identical services in Classes 35 and/or 41.
23 That finding of the Chamber is not affected by the fact that, as the examiner points out, many other faithful images of faces are conceivable from women and men. They will each represent a unique representation of that particular person, with his/her own specific external characteristics. In this context, the existence of double-riders and identical multiple births may be disregarded as exceptional and exceptional. Moreover, that argument could be put forward, also wrongly, against any other type of trade mark; how many words, patterns, images of animals, etc. do not exist?

24 Theexaminer’s argument that, with regard to the services requested in Classes 35 and 41 of mannequins and photomomodels, the image would represent only the person providing those services, indicates, on the contrary, that the image may be perceived as a means of distinguishing the commercial origin of those services. The relevant public will perceive the sign as a means of identifying the origin of the services in question, namely that they originate from the person depicted, with whom the sign fulfils the essential function of a trade mark (16/11/2017, R 2063/2016-4, device (PHOTO) OF THE HEAD OF A Woman, § 24-25; 19/05/2021, R 378/2021-4, WEERGAVE OF THE face OF A PERSOON (fig.),
§ 19; 19/05/2021, R 468/2021-4, WEERGAVE OF A PERSOON (fig.), § 19).
25 Similarly, the examiner’s finding that it is not unusual for the services applied for in Classes 35 and 41 that they are presented with the representation of the person providing the services does not call into question the conclusion that the mark applied for has distinctive character. Apart from the fact that such a finding, which, moreover, is unsubstantiated, is consistent with the ground for refusal laid down in Article 7(1) (d) EUTMR, which is not at issue in the present case, the representation appears in the mark applied for only in its kind. Nor is there any question that the use of precisely the mark applied for is customary for the services in question.
26 Finally, the comparison of examiner with the case-law cited above is flawed. The decision of 24/07/2001, R 341/2000-1, Figurative MARK (Doll’s head), which was more than 22 years old, concerns the application for a figurative mark relating to a stylised representation of a popp head with the typical characteristics of all the new-born babies similar, applied for dolls and toys in Class 28. The decision of 01/09/2015, R 2993/2014-5, device OF A SQUAIRE WITH FOUR PICTURES (fig.) concerns the application for a figurative mark relating to a collection of four photographs showing as many as five different persons of
different ages applied for for goods and services in the medical sector.
Conclusion
27 Contrary to the view taken by the examiner, the mark applied for does not infringe the absolute grounds for refusal set out in Article 7(1) (b) EUTMR.
28 It is therefore not necessary to examine whether it has acquired distinctive character through use in relation to the services in respect of which registration is sought pursuant to Article 7(3) EUTM>>

La soluzione data non è condivisibilissima (pur in un caso non facile), sia per la distiontività sia per l’individuaizone del consumatore diriferimeno (non è il general public)

La fotografia di in viso determnatonon è perceputo come indicaizone dell’origine aziendale

Rimane difficilino registrare marchi di posizione (soprattutto se consistente nella colorazione delle suole dei calzari)

Descrizione del marchio nella pagina web EUIPO: <<The mark consists of a product configuration consisting of a metallic gold sole on footwear. The dotted lines demonstrate placement of the mark and are not claimed as a feature of the mark. >>

Disegno ivi presente:

Rigettata la domanda di registaizone dallEUIPOP n° 018731419 con decisione 31 agosto u.s..: il segno <<does not possess at first sight any distinctive character in relation to the goods pursuant to Article 7(1)(b) EUTMR and is therefore unable to function as a trade mark in the market place, i.e. it fails to distinguish these goods from those of other undertakings>>

Però la corte di giustizia UE 12.06.2018 ha validato quello rinomato di colore rosso di Louboutin (caso C-163/16) (L?ufficio non la menziona)

(segnalazione di Louise Rooms in IPKat)

Altro rigetto di registrazione come marchio per la suola Birkenstock

Marcel Pemsel su IPKat comunica la decisione del Bundespatentgericht 21 agopsto 2023 che il pattern trademark (marchi costiotuiti da motivi ripetuti o seriali) de quo manca di distintività, confondendosi copn ll’aspetto tipico delle suole di calzari (purtroppo decisione in tedesco)

Marchio non distintivo per beni e giochi virtuali

La fotografia di un mitragliatore per giochi on line basati su armi da fuoco non è distintivo e quindi nemmeno registrabile.

Così l’appello amministrativo EUIPO-4 sez.- 13 settembre 2023, case R 275/2023-4 Colt CZGroup .

Ne dà notizia Alessandro Cerri su IPKat.

Questo il marchio:

La decisione è esatta ma anche facile. Il marchio possiede distintività vicina allo zero (nemmeno un minimo tentativo di personalizzare -“originalizzare” o meglio “distintivizzare”, verrebbe da dire- l’immmagine dell’arma), nè rileva il fatto che si applichi a vendite di servizi on line invece che beni fisici.

Quasi invisibile la componente denominativa.

L’unico passaggio interessante è il rapporto con la privativa da disegno/modello. Per l’ufficio, esso è nullo: quantunque questa presupponga “carattere individuale”, il giudizio di distintività sul marchio è da essa autonomo.

Conclusioni dell’ufficio:

<<55 In the present case, the mark applied for constitutes a banal representation of the object which is the essence of the goods and services claimed and, therefore, merely informs the relevant public in the territory of the European Union of the nature of the goods and services at issue in Classes 9, 35 and 41, namely that they are virtual goods in the form of firearms or online entertainment, sporting or cultural services aimed at virtual firearms. The application in that figurative version does not provide the consumer public in the territory of the European Union with any additional original information.
56 The relevant consumer public will therefore not be in a position to determine the commercial source of those goods and services when it sees the mark applied for in relation to the goods and services in question in Classes 9, 35 and 41. In addition, the application contains completely non-distinctive (‘MADE IN CZECH REPUBLIC’) and small-sized, miniature (‘CZ BREN 2’) word elements which cannot in any way influence its absence of distinctive character and avert the perception of the relevant public from a completely common representation of a firearm which has no distinctive character in relation to all the goods and services defined above, or which could create a lasting impression of the mark.
57 The applicant stated that the application deviates significantly from the norm or customs in the sectors concerned and this is apparent, for example, from evidence No 1-8 submitted by the applicant at first instance (see observations of 23 May 2022). In that regard, the Board of Appeal finds, first of all, that the evidence supporting the secondary declaration of acquired distinctive character of the application cannot be taken into account in the present appeal proceedings, since the Board of Appeal deals exclusively with the question of inherent distinctiveness, which always precedes the possible application of Article 7(3) EUTMR. However, the Board of Appeal analysed the referenced Annex 1-8 in the form of an extract from Wikipedia, articles from various periodicals and photographs of firearms and indicated that they did not in any way reveal, either individually or in relation to each other, that the application was sufficiently distinctive or that it departed significantly from norms or customs in the sector concerned – those documents do not in any way support the applicant’s assertion that the figurative element of the firearm reproduced in the application was complex. That evidence does not in any way follow from that evidence.
58 As regards the applicant’s argument that the exceptional shape and general appearance of the application is supported by the fact that CZ BREN 2 is also registered as a Community design and therefore has individual character, the requirement of individual character being similar to that of a trade mark, the Board of Appeal rejects it as wholly unfounded. The existing Community design No 4409852-0001 cannot have any direct effect on the distinctive character of the trade mark application in relation to the goods and services in Classes 9, 35 and 41. The trade mark must have the capacity to distinguish unequivocally the goods and services of a given undertaking from those of another undertaking, irrespective of whether or not a related design is registered.
59 A design and a trade mark are two distinct types of industrial property rights governed by different laws and having different criteria or conditions for registration. The use of the argument that a design is registered and has individual character cannot have a direct effect on the distinctive character of the mark. That criterion applies exclusively and individually to the trade mark application referred to above, notwithstanding its similar representation with that design>>.

Caramella a forma e sapore di fetta di anguria: marchio di forma negato dal 3° circuito d’appello usa

il 3 circuito d’appello usa 7 settembre n. 22-2821, Pim brands v. Haribo, giudice Arleo, conferma il primo grado (notizia e link da IPwatchdog)

La forma e i colori indicano il flavour del dolciume: quindi nessuna distintività.

<<The question is whether the candy’s colors alone signal its flavor or whether the colors and shape combined further that function. Though PIM disagrees, we think the two work together. (…)

As PIM notes, the shape and colors do not match exactly: The bottom could be more curved and have a thinner band of darker green. The wedge could be wider. The point could be sharper and a deeper red. There could be black seeds. But as PIM itself put it, because this candy is an impulse buy, it “do[es]n’t need to be the Mona Lisa.” Oral Arg. 13:15–19. To identify its flavor, the candy’s trade dress need not exactly copy watermelon, but just evoke it.
And the shape contributes to the overall effect. Some shapes for watermelon candies, such as sharks, ropes, and rib-bons, detract from (or at least add no information beyond) the colors. But the wedge shape contributes to the function. The colors alone could leave some ambiguity: Is it watermelon or strawberry? With the wedge shape, all ambiguity is gone—this candy is a wedge of watermelon.
In that vein, the wedge might or might not identify the fla-vor on its own or with other color schemes. That trade dress is not before us; the watermelon-colored wedge is. The registered trademark at issue defines the mark by both colors and shape. So does PIM’s complaint. Plus, when we look at the pictured candies, our eyes are drawn immediately to both their colors and their shape. We think of a slice of watermelon based on both its color scheme and its shape. And in this color scheme, the candy looks like a watermelon wedge. So we hold that the trade dress presented as a whole, colors and shape together, makes the watermelon candy more identifiable as a slice of wa-termelon. That is function enough>>.

DA noi la conclusione sarebbe verosimilmente uguale ex art. 9.c – 13.1.b) c.p.i.

La suola dorata non può costituire marchio per scarpe (ancora sui marchi di posizione)

Jerome Tassi su Linkedin segnala la decisione 31 agosto 2023 EUIPO, domanda nà 018731419, istante: Yeshua Investment consulting, che dà esito opposto ai notissimi casi Louboutin

In breve dice ora l’ufficio che il pubblico non lo percepusce come segni di provenenzia aziendale

<<In the case at hand the sign is not distinguishable from the appearance of the
goods it designates, namely “metallic gold outer soles sold as an integral
component of men’s and women’s shoes”; it would only be distinctive for the
purposes of Article 7(1)(b) EUTMR if the consumer was able to recognize the
sign applied for as originating from a particular undertaking and thus to
distinguish the shoes of the applicant from those of other undertakings
(21/04/2010, T-7/09, ‘Spannfutter’, EU:T:2010:153, § 26) and, also, if it
departs significantly from the norm or customs of the sector. The benchmark
also applies to signs which are only applicable to a component or an element
of the appearance of the product, in the case at hand “Metallic gold outer
soles” (10/10/2008, T-387/06 to T-390/06, ‘Pallet’, EU:T:2008:427, § 36;
13/04/2011, T-202/09, ‘Footwear’, EU:T:2011:168, § 40; 19/09/2012, T-50/11,
‘Stoffmuster’, EU:T:2012:436, § 43).
· The sign consists of a metallic gold sole on footwear. It is clear from these
objective characteristics that the sign applied for aims to protect a coloured
surface in a particular position of the shoe. The sign merges in the eyes of the
relevant public with the claimed goods itself, i.e. shoes, since in the words of
the applicant the metallic gold outer soles are sold as an integral component
of men’s and women’s shoes.
· As to the gold colour of the sole, the public will not instantly perceive a single
colour, or a coloured element which forms part of the external appearance of
the goods as a reference to the commercial origin of the goods (21/10/2004,
C-447/02, ‘Orange’, EU:C:2004:649, § 78). Thus, while colours are capable of
conveying certain associations of ideas, and of arousing feelings, they
possess little inherent capacity for communicating specific information,
especially since they are commonly and widely used, because of their appeal,
in order to advertise and market goods or services, without any specific
message (06/05/2003, C-104/01, ‘Libertel’, EU:C:2003:244, § 40; 24/06/2004,
C-49/02, ‘Blau/Gelb’, EU:C:2004:384, § 38; 12/11/2008, T-400/07, ‘Farben in
Quadraten’, EU:T:2008:492, § 35).
· Furthermore, the use of the gold colour to highlight the quality of a given
product is a common place associated with high quality and excellence and,
therefore, does not confer distinctive character on the product>.

L’avvocato Tassi segnala l’opposto esito dato dall’ufficio alla suola rossa di Louboutin (dopo il via libera della corte giustizia 12.06.2018, C-163/16)

Modifiche al codice di proprietà industriale

la legge 102 del 24.07.2023 (GU 184 del 8 agosto 2023) apporta alcune modifiche al c.p.i.

Le più importati sono nei primi tre articoli: art. 1 Divieto di registrazione di marchi evocativi di indicazioni geografiche e denominazioni di origine protetta; art. 2 Protezione temporanea dei disegni e dei modelli nelle fiere; art. 3 Titolarita’ delle invenzioni realizzate nell’ambito di universita’ ed enti di ricerca.

In particolare andrà approfondito il caso sub 1, dovendolo distinguere sia da quello delle segg. lettere c) e c-bis) sia dalla tutela delle denominazioni ex reg. 1151/2012, spt. art. 13 (del cui § 3 potrebbe essere ritenuta attuazione)

Cuiriso è la nuolva disciplina del calcolo dei termini di durata, art. 20: pare non coincuidere con quella civilprocessuale , ad es. , se si tiene conto della’rt. 155 cpc.

Disegno elementare ma sufficientemente distintivo ai sensi della disciplina dei marchi

Questo disegno di un teddy bear come marchio bidimensionale (così pare, anche se il rif. all’art. 7.1.e) del reg. 40-1994 fa pensare ad una forma cioè ad un segno 3D) per gioielli è stato ritenuto sufficientemente distintivo, per cui è stata rigettata la domanda di amnnullamenot per carenza di distintività.

Così -confermando la fase amminsitrativa- il Trib. UE 26.07.2023, T-591/21, Apart c. EUIPO-Tous SL.

<< 70 First, it is true that, according to the case-law, a sign which is excessively simple and composed of a basic geometrical figure, such as a circle, a line, a rectangle or a conventional pentagon, is not, in itself, capable of conveying a message which consumers will be able to remember, with the result that they will not regard it as a trade mark unless it has acquired distinctive character through use (see, to that effect, judgment of 12 September 2007, Cain Cellars v OHIM (Device of a pentagon), T‑304/05, not published, EU:T:2007:271, paragraph 22 and the case-law cited).

71 In that regard, it must be observed that the contested sign and geometrical shapes cannot be regarded as being comparably simple. Irrespective of whether it will be recognised as a teddy bear or as a fantasy figure, the outline contains sufficient elements – such as rounded shapes – as a result of which it cannot be compared to a simple geometrical shape.

72 Secondly, it should be borne in mind that it is settled case-law that, in its review of legality, the Court is not bound by the decision-making practice of EUIPO (judgment of 7 September 2022, Völkl v EUIPO – Marker Dalbello Völkl (International) (Völkl), T‑155/21, not published, EU:T:2022:518, paragraph 32 and the case-law cited).

73 Thirdly, the heart symbol is commonly used in trade in general, and not only in the jewellery sector. It is also used in a wide variety of fields and is immediately recognised as symbolising love or affection. The extent of the use of the heart symbol cannot be compared to the use of the representation of a teddy bear. Although the teddy bear is capable of conveying positive feelings, it is not used for the same purposes and is not associated, immediately and unequivocally, with feelings of love or affection, but rather, as the applicant also maintains, with childhood or childhood memories.

74 That conclusion cannot be called into question by the applicant’s argument that the relevant public would not be attracted by the shape of the bear in itself, but rather by the symbols conveyed by it, namely love or tenderness, or by the argument relating to the meaning of the teddy bear as a symbol of love. The consumer will perceive and remember the mark as such and it cannot be established that, in the present case, such a consumer will be attracted by that mark solely because of the appeal of the symbols that it represents>>.

Rigettata pure il motivo della caratteristica (rectius: della forma) che dà valore essenziale al prodotto (art. 7.1.e.iii) reg. 1001 / 2017.

<< 84 The immediate aim of the prohibition on registering purely functional shapes and the prohibition on registering shapes which give substantial value to the goods is to prevent the exclusive and permanent right which a trade mark confers from serving to extend the life of other rights which the EU legislature has sought to make subject to ‘limited periods’ (see, by analogy, judgments of 18 September 2014, Hauck, C‑205/13, EU:C:2014:2233, paragraph 31, and of 6 October 2011, Bang & Olufsen v OHIM (Representation of a loudspeaker), T‑508/08, EU:T:2011:575, paragraph 65).

85 Like the ground for refusal to register that applies to the shapes of goods which are necessary to obtain a technical result, the ground that concerns refusal to register signs consisting exclusively of shapes which give substantial value to the goods is to prevent the granting of a monopoly on those shapes (judgment of 6 October 2011, Representation of a loudspeaker, T‑508/08, EU:T:2011:575, paragraph 66).

86 The concept of a ‘shape which gives substantial value to the goods’ cannot be limited purely to the shape of products having only artistic or ornamental value, as there is otherwise a risk that products which have essential functional characteristics as well as a significant aesthetic element will not be covered. In that case, the right conferred by the trade mark on its proprietor would grant that proprietor a monopoly on the essential characteristics of such products, which would not allow the objective of that ground for refusal to be fully realised (see, by analogy, judgment of 18 September 2014, Hauck, C‑205/13, EU:C:2014:2233, paragraph 32).

87 It should also be borne in mind that, in accordance with the case-law cited in paragraph 34 above, in invalidity proceedings, as the registered EU trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call the validity of that trade mark into question.

88 In the applicant’s view, it is well known that the teddy bear is recognised as a symbol of love – similar to the symbol of the heart – which evokes positive emotions and strengthens the purchasing impulse. The applicant submits that the aesthetic value of the contested mark – an aspect which, in its view, is highlighted by the intervener – determines its attractiveness for consumers and significantly increases the value of the goods.

89 The Board of Appeal stated that the fact that the shape of the contested mark may be pleasing or attractive is not sufficient to exclude it from registration. In that regard, the Board of Appeal stated that the intervener’s statements relating to the meaning of the teddy bear symbol were not sufficient to show that the contested mark came under Article 7(1)(e)(iii) of Regulation No 40/94 and also observed that the applicant had merely recalled the relevant case-law without explaining in what respect the contested sign would determine to a large extent the behaviour of consumers. Lastly, it noted that the applicant relied on several occasions on the alleged simplicity of the bear shape in order to prove that it was devoid of distinctive character, which was in direct contradiction with the criteria required for the application of Article 7(1)(e)(iii) of that regulation.

90 In the present case, it must be stated that the contested mark does not represent a sign which consists exclusively of the shape or another characteristic of the goods. As is apparent from the reasoning set out in paragraphs 37 to 47 above, the goods covered by the contested mark represent items of jewellery which generally take the form of rings, necklaces or earrings and which are likely to bear the sign of which that mark consists, but not to take the shape thereof.

91 Consequently, the contested mark consists of a sign unrelated to the appearance of the goods it covers and not of a sign which consists exclusively of the shape of those goods.

92 Therefore, that assessment of the contested mark precludes that mark from being capable of falling under the prohibition laid down in Article 7(1)(e)(iii) of Regulation No 40/94>>.

(segnalazione di Marcel Pemsel di IPKat)