Confusing Similar Trademarks: What’s Going On In Europe?
We tend to keep an eye on the evolution of brands in Europe. This makes sense because South African trademark law is very similar to EU trademark law and there is a lot more activity in the EU. Of course, South African courts often consider judgments relating to EU trademarks. Here are some recent cases:
Rounded curves, thicker lines and a horizontal orientation… was the judge’s mind a little wandering?
It was an interesting question. It’s probably not often that a perfume house and an IT giant collide, but they have managed to do so in Europe. Huawei has filed for registration of the logo that appears at the bottom left. The application belonged to class 9 and covered a wide range of electronic products, including computer hardware.
Chanel filed an opposition to this request. The opposition was based on its logo (pictured above right), and in particular on a French trademark registration in Class 9 for roughly the same goods as Huawei’s claim. Chanel also relied on a French registration for its logo mark covering completely independent products (such as perfumes), associated with significant notoriety. Chanel alleged that there was a likelihood of confusion between the marks. It also argued that there would be dilution and undue advantage which could harm the distinctiveness or reputation of its mark.
The first obstacle, of course, was to establish that the marks are indeed similar. No easy task. Chanel claimed that there was a high degree of similarity between the two brands when Huawei’s brand underwent 90% rotation. But was this a valid point?
No, said the Tribunal, a fictitious use of this nature is not within the scope of the investigation, it is simply necessary to consider the form in which the marks appear in the register. It is not correct to rotate them: “The marks must be compared as requested and registered, without changing their orientation.
The court added that the two marks “share some similarities, but their visual differences are important”. He went on to explain, “In particular, Chanel brands have more rounded curves, thicker lines and a horizontal orientation, while the Huawei brand orientation is vertical.”
There were, the court said, conceptual differences as well. These are linked to the fact that, while the Chanel mark evokes two letters C, the Huawei mark evokes a letter H, or possibly two letters U. The court concluded as follows: “Consequently, the Court concludes that the marks are different.”
It will be interesting to see if Chanel seeks to appeal this judgment to the highest court in Europe.
Our “mirror” bottles
In Venice, they know a thing or two about glass. The Venice Court of Appeal, or as we like to say the lawyers of international brands, the corte of appello di Venezia, recently ruled in an interesting trademark infringement case. This case concerned an EU trade mark registration belonging to the Bottega winery for a three-dimensional shape mark. This includes a bottle of wine in a distinctive gold and rose color combination with most of the bottle being gold except for the top which is pink.
The winery argued that its trademark registration was violated by a competitor, Winery Ca’di Rajo, which also used golden coloring on a bottle of wine, although a bottle having a different shape and label from those of Bottega. The court ruled that the trademark registration had been infringed, thus setting a good example of how color can both function and be protected as a trademark.
The owner of the Bottega winery said this after the judgment: “I expect the competition to understand now that our specchiate bottiglie, our mirror bottles are unique and incomparable. ” Yes, certainly!
The classic, something a little different, but still relevant
This will be of interest to football fans. You obviously know that The classic is the unofficial name given to any game between Real Madrid and Barcelona. You’ll also know these two teams were in the news recently, when it emerged that 15 of Europe’s top teams were looking to form a breakaway super league, a development that would have had a huge (possibly negative) impact on Europe. . Soccer. It could also have made the meetings between the two Spanish giants quite rare. The 15 clubs quickly washed their hands of it when it became apparent that football fans were furious.
It now appears that a type of business has requested to register The classic as a trade mark of the European Union in class 41, the class which covers sports and entertainment services. But the authorities rejected this request on the grounds of the lack of distinctiveness and the absence of proof of a commercial link between the applicant and the name. Reports on this are sketchy, but it appears that both clubs have opposed the bid themselves, although the bid has even reached the stage of formal opposition is unclear. Football’s reputation has taken a hit, but it will undoubtedly recover.
The decisions we have discussed here may one day prove to be influential in South Africa.