Colours and colour combinations play an important role in branding. In a crowded sector colours have the capacity to function as a powerful visual key, enabling consumers to easily distinguish between different products and brands. Trade mark rights granted for specific colours, or combinations of colours, are, therefore, powerful IP rights. The uncertainty surrounding how similar a colour must be to infringe a colour mark registration works in the favour of the owners of colour trade mark registrations – in extreme cases a colour mark registration may deter competitors from using all shades of that colour on/in relation to the same goods/services. Little surprise then that for some trade mark owners securing registered rights in colour marks has become a key strategic objective.
Insights: Trade Marks
The CJEU have recently issued a judgment in Case C-456/19, referred from the Swedish Patent and Market Court of Appeal. The case centred on whether a trade mark consisting of colour combinations, intended to be systematically affixed to goods used to deliver the services covered by an application, must depart significantly from the norms and customs of the commercial sector in order for the trade mark to have distinctive character. This is a test which has been applied in relation to 3D trade marks but we have not seen it applied to these type of colour combination marks before.
The rules governing address for service for intellectual property rights in the United Kingdom will change after the UK exits the European Union on 1 January 2020. Subject to legislative implementation, which is expected this week, from 1 January 2021 the UKIPO will no longer accept addresses in the EEA as a valid address for service. As a result, any party wishing to file an application for a trade mark, patent or registered design will need to appoint an address for service within the UK, Gibraltar or the Channel Islands.
The Court of Justice of the European Union (“the CJEU”) has recently issued a judgement concerning the genuine use of Ferrari’s German TESTAROSSA trade mark registrations. This judgement was a positive outcome for Ferrari, and is particularly beneficial to owners of legacy and heritage brands.
In March 2013 the mark was granted registration under EUTM No 010914836 in Classes 9, 20 and 35. The protected goods included “Smart phones, Mobile computing devices, tablets” and “Furniture”, while the services included the retailing, wholesaling and mail order of these and other goods. On 29 February 2016, Samsung Electronics GmbH (“Samsung”) applied for a declaration that the registration was invalid on the basis that the mark was non-distinctive and descriptive in relation to all of the protected goods and services. However, the Cancellation Division rejected Samsung’s application and the registration was maintained. The Cancellation Division found that the term “SMART THINGS” was descriptive, and noted that the figurative element “:)” (“the emoticon”) is ubiquitously used as a smiley in society at large, including in business, and has positive connotations. However, the Cancellation Division held that the emoticon endowed the mark with at least a minimum of distinctive character and meant that the mark as a whole was not purely descriptive.
The United Kingdom’s Intellectual Property Office (IPO) recently released a report on sectors of the economy which make the most intensive use of intellectual property (IP) rights, and how much these sectors contribute to the UK economy.
OFF-WHITE wins its appeal at the General Court to register the OFF-WHITE black and white logo trade mark
OFF-WHITE has won its appeal at the General Court to register the OFF-WHITE black and white logo trade mark in the EU following the decision of the EUIPO that the mark is inherently descriptive and non-distinctive.
Manchester United FC has initiated trade mark infringement proceedings in the High Court against SEGA Publishing Europe Limited, the European arm of the Japanese video-game brand, and Sports Interactive Limited, producers of the video game Football Manager®. The game Football Manager® has been around since 1992 and is a hugely successful football management simulation video game. Players can manage their own virtual equivalents of real life clubs, controlling everything from pre-season transfers to the tactics on the pitch.