Good and cold morning,
As Winter is creeping upon us, we bring you the latest news in the world of IP and strongly recommend enjoying them with a hot cup of tea or coffee, at your convenience.
Adidas vs. Adidog
If any of you have dogs, you might be familiar with the “Adidog” brand. Most likely, you might have seen it on dogs’ sweaters that can be find in some shops. Well, earlier this year, Adidas filled its opposition before the Japanese Patent Office, requiring the JPO to cancel a pending trade mark application for the word “Adidog” on dogs’ clothes. Just as in Europe, the Japanese trade mark law establishes the prohibition to register a trade mark that is likely to cause confusion amongst consumers as to the source of the product bearing the trade mark. In this case, Adidas considered that due to the similarity between both trade marks and the reputation of Adidas (and I would add the fact that instead of three stripes, Adidog uses three bones very similarly) there was a risk that consumer would assume that Adidas is somehow affiliated to Adidog or even behind this variant of its brand. In this case, the JPO has sided with Adidas and denied registration to the Adidog brand.
Just FYI, Balenciaga has initiated a trade mark fight against “Pawlenciaga”.
Trump vs. Queen
Trump’s campaign video has been taken down due to copyright infringement. Indeed, the US president used Queen’s famous “We Will Rock You” in his campaign video without authorization. The video has, since the 12th of October been taken down. This is not the first copyright claim directed against Trump’s campaigns. Other artists such as Nickelback or Prince have filled copyright strike because their songs have been used in said campaign without their authorization.
Dominican Republic joins the Lisbon Agreement
We welcome the accession to the Lisbon Agreement by the Dominican Republic. This agreement provides a simplified administrative procedure to register your appellation of origin through a single registration application and one set of fees.
Chanel and MadameCoco
A Turkish lifestyle and homewares company filled for trade mark protection of the brand “MadameCoco” before the UK Intellectual Property Office. To address this situation, Chanel tried to have the trade mark application rejected due to its similarity to Chanel’s “Coco Mademoiselle”. The likelihood of confusion was argued on the basis that both trade mark contained the word “COCO”, name of Chanel’s founder. In addition, Chanel considered that due to this similarity, MadameCoco would unfairly benefit from Chanel’s brand reputation.
However, the UKIPO had a different stand on the matter. Indeed, according to the UKIPO, although both marks do bear the name “COCO” there are differences between both, the first one being that Madame y Mademoiselle are both different words in length and use. Second, MadameCoco is seeking registration for the following categories of goods: retail services for manicure, pedicure, shaving and personal beauty care, hair brushes and combs. Although Chanel’s has acquired reputation for women’s perfume and cosmetics, the company is completely absent from the markets where MadameCoco seeks registration.
Therefore, MadameCoco’s registration was allowed to move forward.
Kanye West trade mark application rejected
Since Coachella 2019, Kanye West has been organizing “pop-up gatherings” with religion themed wares and the corresponding merchandising under the brand “Sunday Service”. As such, Kanye’s lawyer sought trade mark protection for the “Sunday Service” goods related to said events (dresses, footwear, headwear, jackets…)
The problem is that somebody has already registered this trade mark before the USPTO in 2015 (and has been using it consistently since 2014). This somebody is DJ Escape that has been using “Sunday Service” in connection to hosting, organizing and carrying out musical events.
Both trade mark are undeniably similar. But here, they are not seeking registration for the same categories of goods, so where is the problem? Well, the US examiner considered that although true that classes for which registration is sought are not similar, it is actually common practice to sell merchandise related to musical events.
The examiner considered that services consisting of “entertainment in the nature of live music in a club or concert” are commonly “sold or provided through the same trade channels and used by the same classes of consumers” as those offering music-related garments. As a result, there is a likelihood in confusion of the consumer, which justified rejection of Kanye’s application.
This is all for this week. See you next weeks!
One very amusing and interesting link as Halloween is approaching:
- Creepy patents for Halloween - https://library.wyo.gov/creepy-patents-for-halloween/