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mcdonalds-Supermacsa-Trademark
Supermac’s wins Second ‘Mc’ Trademark Dispute against McDonald’s

McDonald’s has recently lost the exclusive ownership of the ‘Mc’ trademark on some of its products within the European Union (EU) after losing another battle to Supermac’s, the global fast-food giant. According to the judgment issued at the European Union Intellectual Property Office (EUIPO), McDonald’s no longer exclusively owns the right to use the ‘Mc’ prefix for a whole swathe of food areas. However, the EUIPO has also ruled that McDonald’s can legitimately continue to use the ‘Mc’ trademark on chicken nuggets and some of its sandwich products across the EU.

The decision follows a complaint made by Supermac’s to the EUIPO stating that McDonald’s never used the ‘Mc’ prefix in a standalone sense, but only in combination with other words to brand their products and services. This year, in the beginning, Supermac’s had also won its long-running dispute against McDonald’s by having canceled the use of the Big Mac trademark. In that judgment, the EUIPO stated that McDonald’s failed to prove the authentic use of the Big Mac trademark as a burger or as a restaurant name.

Pat McDonagh, Supermac’s founder, and Managing Director reacted to this latest ruling by saying that the decision has marked a victory for small businesses. He further added that McDonald’s tried to argue by saying that the term Mc was so synonymous with them, that they had the right to own and trademark Mc. At last, McDonagh stated that the fast-food giant is delighted for having the EUIPO ruled in their favor.

The latest EUIPO decision revokes McDonald’s automatic trademark rights to the use of the ‘Mc’ trademark on a long list of food items related to foods prepared from meat and poultry products (except chicken nuggets), eggs, cheese, milk, pickles, milk preparations, to name a few. The revocation also applies to many other food items and beverages like biscuits, cakes, cookies, coffee, oatmeal, pastries, along with the restaurant services.

In its recent submission, Supermac’s asserted that the trademark should officially be revoked with effect from five years following the date of registration since it was not put to veritable use by McDonald’s in connection to the majority of the products and services listed at the time of registration process.  McDonald’s contested this statement by filing several written observations and evidence for proving the fact that it had made use of the trademark corresponding to all of the registered goods and services, except for oatmeal.

As per the ruling of the EUIPO, since both firms had succeeded in some parts of the case and failed on others, they must bear their costs.

A spokesperson for McDonald’s stated that the EUIPO upheld the EU registration for its ‘Mc’ trademark standing alone for various core menu items that McDonald’s uses corresponding to its widely-known ‘Mc’ prefixed trademarks. He further added that the decision would never have an impact on McDonald’s ability to use the ‘Mc’ prefixed trademarks or other trademarks across Europe and around the world and McDonald’s shall continue to enforce its rights. Lastly, he said that McDonald’s considers the family of the ‘Mc’ prefixed trademarks among its most valuable assets and consumers across the globe recognize these trademarks with the exceptional quality offered by them.

 

Trade-Secrets
Hidden Form of IP – Trade Secrets

In today’s Intellectual Property (IP) intensive environment, the creators widely share their new ideas and inventions on various public and social media platforms. However, in this increasingly complex world with cut-throat competition on its verge, certain things that might ordinarily be protected by traditional Intellectual Property Rights (IPR) like trademarks, patents, and copyrights, are best kept a secret. Some of the world’s widely-known trade secrets like the recipe of Coca Cola and Google’s search algorithm, own immense value. These companies could immediately perceive that the IP value of these particular assets lays in their secrecy. Therefore, by treating them as trade secrets, these companies maintain a competitive advantage and an upper hand in the market.

WHAT ARE TRADE SECRETS?

Trade Secrets are the hidden forms of intellectual property that add value to a business. For many years, trade secrets had been in the shadows, but nowadays, they are gaining importance and have become an effective means of protecting certain valuable assets. Any information, which is commercially valuable and sensitive, can qualify as a trade secret. The subject matter of trade secrets covers a wide range including sales and distribution methods, advertising and other business strategies, the list of suppliers and consumers, to name a few. However, unlike other forms of IP, trade secrets aren’t exclusive legal rights and can therefore not be enforced against anyone who discovers the secret independently. But, in the cases of a trade secret’s misuse or unauthorized acquisition, appropriate actions can be taken. Moreover, the proprietor or owner of the trade secret can get an injunction in such unlawful acts.

TRADE SECRET LAWS

Just like the other IP Rights, protection of trade secrets is as per the prevailing national laws of a particular country. Although there are no formal requirements to register trade secrets with official authorities, most developed countries have laws dealing with the issues of trade secrets’ misappropriation or unlawful acquisition. For instance, in the United Kingdom, there isn’t any formal definition of a trade secret with no limitation on the type of information that can constitute a trade secret. However, the laws related to trade secrets offer effective remedies to the proprietors when their trade secrets have been unlawfully acquired, used, or disclosed.

TRADE SECRETS OR PATENTS?

One tough decision that most of the businesses nowadays have to make is whether they should protect their intellectual asset with the traditional IP Rights (like filing a Patent Application), or keep it as a trade secret. Although in some cases the answer may not be relatively straightforward, however, in many instances, answering the following questions can clear several doubts.

  1. Is the technology, invention, or the idea of a new process, patentable?
  2. Is the IP asset in question worth keeping secret and commercially valuable?
  3. Is there a high probability or risk of someone else patenting your asset or invention?
  4. Would, you as the owner of the asset be able to ensure its secrecy?
  5. What are the chances of your competitors coming to know about how your asset works by reverse engineering or any other means?

There are other considerations as well, which need to be taken into account, like the costs of protecting the asset and the interests of the investor. In a nutshell, it won’t be wrong to say that both trade secrets and patents are effective forms of IP protection; however, one may be more suitable than the other based on the situation and the subject matter. The owners should realize the fact that trade secrets can be potentially as valuable as patents, only if they are protected diligently, and used strategically.

HOW CAN TRADE SECRETS BENEFIT THE SMALL AND MEDIUM-SIZED ENTERPRISES?

It is a matter of fact that yes; the patenting process is time-consuming and an expensive affair, with which many small and medium-sized enterprises (SMEs) often struggle. In such cases, trade secrets become handy as they are relatively straightforward, require no registration costs, or legal procedures to be followed. Therefore, SMEs should consider keeping their undetectable manufacturing techniques, list of suppliers and consumers, or the hidden components in their products and services as trade secrets. Additionally, they can also license their trade secrets only after ensuring a confidentiality agreement.

BOTTOM LINE

Nowadays, many educational institutes and IP authorities across the globe are reaching out to the business firms and organizations for improving the awareness, usefulness, and value of trade secrets, however; there are still a lot of efforts required to strengthen the laws surrounding them.

trademark
Louis Vuitton Can’t Trademark ‘APOGÉE’

Louis Vuitton (commonly referred to as LV), a French fashion house and luxury retail company, is fighting for Trademark Registration of the name “APOGÉE” with the US Patent and Trademark Office (USPTO).

Back in 2015, the US Trademark body declined LV’s request to register the mark “APOGÉE” for use on a broad spectrum of products like perfumes, shower gels, lotions, lipsticks, to name a few. KAB Brands, a California-based haircare company, which owns two federally registered trademarks for the word ApHOGEE raised opposition against Louis Vuitton’s Trademark Application of the word APOGÉE. The haircare company stated that the APOGÉE mark would create confusion in the consumer market with its already existing trademark used in skincare and health products. The USPTO accepted the opposition raised and refused to register Louis Vuitton’s mark. For registering the mark by removing all similarities between its products and those of KAB, Louis Vuitton amended the trademark application. From the list of products on which it would have used the APOGÉE mark, it removed the hair care preparations. It also asserted the fact that the products with the mark were only for sale in the LV’s stores, websites and high-end retail stores. However, the USPTO stated such changes couldn’t eliminate the chances of confusion among the consumers, which in turn might lead to a claim of Trademark Infringement.

After facing rejection from the USPTO, Louis Vuitton appealed to the Trademark Trial and Appeal Board (TTAB). The TTAB refused to register the APOGÉE mark by stating that both the marks were similar in not only the appearance but also in pronunciation, thereby giving rise to a likelihood of confusion.

With yet another rejection in hand, the fashion label took the case to the US Court of Appeals for the Federal Circuit. The court served LV with another loss last week by refusing to register its APOGÉE mark. The 3-judge panel of the Federal Circuit asserted that both the marks were very similar in all aspects like appearance, sound, and commercial impression. The panel went further by adding the fact that though there was a massive price difference in the products sold by both the parties, it could never prevent Louis Vuitton from coming out with a low-cost version of its products.

Although Louis Vuitton couldn’t register the mark APOGÉE, it can still continue to sell its products. As for whether KAB will now initiate legal proceedings of trademark infringement against Louis Vuitton is totally another issue.

Trademarks in Turkey
Protection of Non-traditional Trademarks in Turkey

Traditionally, trademarks comprised of a word, logo, symbol, or a combination of these three. However, businesses have now started to rely on colours, sounds, motions, positions, and holograms to distinguish their products and services in the consumer market. In Turkey, substantial protection of these non-traditional trademarks is not described in the Turkish Industrial Property Code or IP Code. As there are no special provisions in the code for the registration of non-traditional trademarks, the principles, which pertain to the Trademark Registration of other signs, are also applied to non-traditional trademarks. Moreover, the absolute refusal grounds as per Article 5 of the IP code are also applicable to these non-traditional trademarks as well.

According to Article 4 of the IP code, a trademark must be capable of being represented on the register by distinguishing the products and services from those of other undertakings. In this provision, colours, shapes, and the sounds of goods, along with their packaging, are also specifically mentioned. As all types of signs are mentioned in this Article, there is no legal obstacle to the registration of motion marks and holograms as trademarks as well.

As per Article 7 of the Regulation on the Implementation of the Industrial Property Code which came into effect on April 24, 2017:

  • Representation of the mark, including a view from one side or multiple angles so as to provide a clear and precise understanding of the subject of protection, must be submitted for three-dimensional (3D) trademark applications.
  • Recordings of sound suitable for listening and storing in electronic form must be submitted to the office for sound trademark applications.
  • Colour images and an indication of the colour code accepted by the office must be submitted for colour trademark applications.
  • Images describing the trademark’s motion or motionless or moving image sequence must be submitted for motion trademark applications.

The regulation regarding the representation of trademarks is now in line with the EU Trademark Regulation, which will lead to significant progress regarding the non-traditional trademarks as the abolished Regulation on the Implementation of Decree-Law 556 didn’t include provisions for sound, motion, colour, or 3-D marks. This new regulation effectively reduces the lengthy procedures of trademark registration by clearly defining what must be submitted at the time of registration of different types of trademarks.

COLOUR MARKS

In Turkey, there are two types of colour marks, which can be registered as trademarks, namely, single colour trademarks, and combination colour trademarks. In practice, trademarks composed of colour combinations are distinctive and uniquely identifiable than single colour trademarks. As per the Court of Appeals’ various decisions, single colour trademarks cannot be monopolized, and their public use is equitable. For geographical representation, the dimensions of each colour and their respective positions in the sign must be clearly described.

SOUND AND MOTION MARKS

Sound and motion marks can also be registered as trademarks in Turkey if they satisfy the criteria for a trademark and possess a distinctive character. In the case of sound marks, the length of the sound is crucial, as long sounds usually result in refusal due to non-distinctiveness. Sounds that are either generic in any relevant sector or descriptive in nature are not granted Trademark Protection. Motion marks must be graphically represented in a series of pictures and drawings along with a statement describing the features and functions of the images in the trademark, as well as the changes occurring between them.

3D MARKS

For 3D trademarks, a graphical representation has to be submitted in Turkey in the form of a picture, drawing, photograph, or any other means capable of representing the mark. The graphical representation is a part of the trademark application, which is taken into consideration during the examination process.

CONCLUSION

Along with traditional trademarks in Turkey, the registration of non-traditional trademarks like 3D shapes, colours, sounds, and motion marks will increase in the coming future after taking into consideration the recent changes in the Turkish Trademark Law, which is in line with the EU directives. However, when it comes to the protection and enforcement of non-traditional trademarks, the offices and courts in Turkey still have a strict approach and carry out a broader and more detailed examination of their registrability.

SOURCE CREDITS

http://www.mondaq.com/turkey/x/808494/Trademark/Protecting+NonTraditional+Trademarks

uspto
New USPTO Trademark Rule Requires Foreign Applicants to have a US Attorney

The US Patent and Trademark Office (USPTO) has announced a new Trademark Rule, which requires all applicants, registrants, or parties for Trademark Application whose domicile isn’t located within the US or its territories to be represented by a qualified attorney licensed to practice law in the US. This rule applies to all trademark applicants or parties whose permanent legal place of residence or business is not within the US.

Furthermore, the licensed attorneys in the US who will be representing the trademark matters on behalf of the foreign applicants before the USPTO are required to confirm that they are an active member in good standing of their bar along with providing their bar membership information.

The Under Secretary of Commerce for Intellectual Property (IP) and Director of the USPTO, Andrei Iancu, stated that organizations and businesses depend on the US Trademark Registration to make significant legitimate decisions about their brand’s entity. He further mentioned that it is imperative for them to have suitable tools to enforce compliance by all applicants for maintaining the integrity and accuracy of the registration process. Moreover, he also said this rule would prove to be a noteworthy step in combating fraudulent entries.

Mary Boney Denison, the USPTO Commissioner for Trademarks, said that many different nations worldwide are having this prerequisite for decades now and this new rule will help in improving the nature and quality of applications submitted to the USPTO.

This new trademark rule will be in effect from August 3, 2019, in the US.

 

Intellectual Property
Misuse Of Trademarks And Risks Involved

In today’s global innovation economy, misuse of trademarks, unauthorized copying of products, or packaging designs are the crucial challenges faced by trademark owners. The reason behind trademark violation involves the presence of product counterfeits or knockoffs in the supply chain. Such counterfeit products pose a serious threat to quality and security, thereby leading to consumer safety concerns and financial risks in the business involved. However, with proper and efficient management of Intellectual Property in the supply chain, such risks can be reduced to a great extent.

HOW ARE TRADEMARKS MISUSED?

Trademark infringement is the legal core issue underlying product and component counterfeits.  Nowadays, counterfeits appear in various industries and sectors. Most people think of counterfeit products as luxury fashion brand items, but the issue is far more extensive. Spare parts for automobile, military, and security equipment, airplanes, and other modern industrial products, might be set apart as originating from a specific renowned brand’s producer, but, in fact, be of low quality or a defective item fabricated by someone else.

Counterfeit drugs, fake medications, and medicinal items, liquor, food, and several other consumer products and ingredients, may not contain the correct formula, or without a doubt, may contain harmful or poisonous material, passed off as the genuine article under another person’s trusted trademark. In the guise of genuine trademarked items, electronic items have also entered the supply chain of counterfeit components. These may be wrongly stamped as second-hand items, inadequate or substandard knockoffs, or even traded off things that can open a user’s computer system leading to security breaches, and data theft.

Apart from the manufacturing of products and components, trademark misuse also occurs in advertising and marketing activities. Such exercises unjustifiably associate a product with another person’s trademarked brand name.

COMMON PROBLEMS WITH TRADEMARK RIGHTS COMPLIANCE

1- Counterfeit products passed off as genuine articles in the consumer market:

This occurs when an unreasonably low-priced product is purchased without knowing its source or origin, or when the supply chain itself fails to detect such counterfeit products.

2- Violating another person’s trademark in products or services:

Trademark violation can also occur in advertising services, and other activities related to your own or someone else’s brand or business entity. Using and infringing another’s person’s brand entity or trademark can also bring liability.

3- Knockoff products:

As it is widely said that imitation isn’t always the sincerest form of flattery, copying someone else’s brand name, logo or symbol, violates that person’s Trademark Rights.

RISKS INVOLVED

1- Defective products posing a threat to the safety of customers:

Poor-quality and defective counterfeit products like poisonous food and beverages, ineffective drugs, exploding electronics or security equipment, to name a few, can seriously pose a threat to human life, and may occasionally result in deaths.

2- Legal and financial risks due to disruption in the business or supply chain:

Counterfeits leading to product failure or disruption in the supply chain can sometimes provoke claims for replacement or monetary damages. Such legal claims and damages can have an adverse financial impact, sometimes resulting in the downfall of the business.

3- Damage to the brand’s reputation and sales:

When counterfeits slip through the supply chain, the trademark owner’s brand value is negatively affected, and also the supplier and business partners involved in the issue can find their own business entity’s market value and reputation getting tainted.

REMEDIES AND ACTIONS

1- Proper risk assessment in the supplier selection:

Adequate risk assessment involves taking into consideration a wide range of relevant and essential factors like the country, the type of the product, public information and open data, historical information, and the presence of adequate management systems.

2- Efficient managing and monitoring of the supply chain:

Proper management of the supply chain includes checking the products and their security regularly, along with providing feedback and reviews on customer complaints and returns and monitoring the market.

3- Implementing clear and concise policies and procedures:

Proficient implementation of trademark use procedures and guidelines, and contractual provisions covering licenses should be laid down to prohibit the procurement and unauthorized use of counterfeits.

cardi-b-tonight
USPTO Rejects Cardi B’s ‘Okurrr’ Trademark Application

The US Patent and Trademark Office (USPTO), has rejected the Trademark Application of Cardi B, an American rapper and famous TV personality. Cardi B’s attorney, Doreen Small, attempted to trademark her signature catchphrase, “Okurrr” earlier this year in March. Cardi B wanted to use this purported signature phrase on her merchandise, including T-shirts, undergarments, cups, and posters.

However, the USPTO declined the request by stating that the phrase is way too commonplace for obtaining Trademark Protection. It further mentioned that this phrase or expression is well-known and widely used by so many sources and conveys a well-perceived, ordinary concept or sentiment. It was likewise noted that the expression is commonly used in the drag community and by many famous celebrities as an alternate way of saying “Ok” or something that is said to assert when someone is being put in their place.

Till now, many other celebrities like the Kardashians had also used the same expression long before Cardi B filed its trademark application, which the USPTO used as a justification for rejecting her request.

When the famous rapper appeared on “The Tonight Show with Jimmy Fallon” she said, “You know, it’s like a cold pigeon in the New York City” explaining the different versions of the phrase in her book depending on the situation. Moreover, during her cameo alongside Steve Carrell in Pepsi’s Super Bowl Commercial, she used the same phrase. Needless to say but even if the Grammy award winner can’t make it official; it’s still her trademark at this point as well.

Trademark
HUL Steps Up Legal Action against IPR and Trademark Violation

Hindustan Unilever Limited (HUL), a British-Dutch manufacturing company headquartered in Mumbai, India, has raised its stakes against copycats and counterfeits more than ever before. The company is now more aggressively suing smaller consumer goods manufacturers in Assam, Gujarat, and Jodhpur, to name a few. HUL wants to prevent these small businesses from using similar trademarks, logos, symbols, names, and even descriptions, to save their brands’ entity and reputation. Since the beginning of this year, the company has filed around 30 cases, with an average of filing one case per week to stop the copycats and counterfeiters from manufacturing and marketing identically packaged goods in the consumer market.

According to HUL’s spokesperson, the company is aggressively protecting its Intellectual Property Rights (IPR) and promptly takes appropriate action either when their rights are violated by third parties or when they become aware of any infringing activity.

This year in May, Unilever PLC, the local subsidiary, took HMT Detergents, a company based out of Himatnagar, Gujarat, to Bombay High Court. Unilever PLC alleged that the company was infringing its mark “Wheel” for its brand “Toofan” by using a similar layout, placement of functional features, and artwork. On May 31, 2019, HMT detergents settled the issue outside court by agreeing not to market the washing bar and detergent under the identical packaging.

Similarly, HUL also approached the court against Parmeshwari Ice Cream Pvt. Ltd, based out of Indore, for infringing their ice cream brand, “Cornetto.” Subsequently, the local ice cream maker lost the case against HUL on May 22, 2019, and paid monetary damages of worth Rs 3 Lacs.

Hindustan Unilever is a firm believer of the fact that infringers should never go unpunished. HUL’s spokesperson also stated that in spite of an injunction, counterfeiters and infringers usually revert to the same illegal practices after some years. He further mentioned that imposing financial obligation acts as an additional deterrent in this particular case.

Several laws like the Trade Marks Act, Copyright Act, and the Customs Enforcement of Intellectual Property Rights, have certain rough edges, and HUL is now working with the government administration via industry forums, to smoothen it out. Over the past three years, various other companies and brands like Tommy Hilfiger, Lacoste, Calvin Klein, and many others, have helped confiscate thousands of fake apparels by filing several petitions with the courts.

Huawei
Huawei Trademarks its own Mobile OS after US Ban

Huawei, a Chinese multinational technology company, files Trademark Registration of its own operating system (OS) “Hongmeng” for use in at least nine countries and Europe that can replace the Android OS in their smartphones, and other devices. This move comes after the US government imposed a ban on Huawei that prevents the Chinese company from dealing with American companies. The ban implies that people who use Huawei phones and devices around the globe won’t receive Android OS updates, which would have an adverse effect on the company’s business and reputation in the consumer market. As Huawei is the world’s second largest manufacturer of smartphones, the US ban could position the company in jeopardy.

Huawei has filed the trademark registration of its “Hongmeng” OS in many countries like Cambodia, Canada, South Korea, New Zealand, besides Peru and the European Union, as per the data from the World Intellectual Property Organization (WIPO).

However, the US administration doesn’t seem to relax its ban imposed on Huawei. Some state department officials have also stated that the technology company won’t be able to proceed further without the support of US companies. The US may also try and exert influence on some of its friendly nations, including the European Union, not to engage in any trading with Huawei.

As per the allegation, the Chinese company might have few connections with the Chinese government and that its OS might be used for spying. However, Huawei has denied such accusations.

Though it is a matter of fact that yes; Huawei has not been very successful in obtaining the registration of its “Hongmeng” OS trademark. For instance, in Peru, the country’s antitrust agency, Indecopi disclosed that it had asked for some additional details about the OS from Huawei to which the company has not responded in nine months.

It may take some time for Huawei before the “Hongmeng” OS gets the required clearances to update their smartphones with the proprietary OS.