Just when it seemed that Lionel Messi had finally stopped making headlines after a tumultuous summer, on September 17, 2020, the Court of Justice of the European Union (CJEU) ruled in Cases C-449/18 and C-474/18 on the appeals filed by EUIPO and J.M.-E.V. e hijos S.R.L. against the judgment handed down by the General Court (GC).

As we mentioned previously, and to recap, F.C. Barcelona player Lionel Messi filed European Union trademark application No. 010181154 with EUIPO in 2011 to distinguish goods in classes 9, 25, and 28, using the following graphic:

As a result of that application, the owner of the earlier European Union trademarks Nos. 3436607 and 414086 MASSI (word marks), registered in classes 25, 9, and 28, respectively, filed an opposition based on the existence of a likelihood of confusion and/or association (Article 8.1. b) of the EUTM Regulation) between the trademark applied for by Leo Messi and the earlier trademarks regarding the“MASSI” mark.

EUIPO ruled in full favor of the opposition filed by the owner of theMASSI trademarks, thereby rejecting Leo Messi’s application on the grounds that there was a likelihood of confusion between the conflicting marks. Consequently, in 2014, Lionel Messi filed an appeal against the rejection decision, but EUIPO dismissed it.

In September 2014, the applicant appealed that rejection decision before the General Court, arguing that the trademarksMESSIandMASSIwere perfectly compatible for registration purposes, since the EUIPO had failed to consider the importance of the conceptual level when analyzing the matter.

The General Court ruled on the appeal on April 28, 2018, granting the European Union trademark at issue; this decision was appealed to the Court of Cassation by both EUIPO and J.M.-E.V. e hijos S.R.L.

Well, the Supreme Court has ruled on this matter and confirmed the decision already issued by the General Court in 2018, establishing the following:

1. In Case C-449/18 P (EUIPO), the Court of Justice held that the General Court had duly taken into account the perception of the MESSI and MASSI marks by the entire relevant public when assessing the likelihood of confusion, and not just by a portion of that public, as EUIPO had argued. This is due, in the Court of Justice’s view, to the appellant’s misinterpretation of the General Court’s judgment.
2. With regard to Case C-474/18 P (J.M.-E.V. e hijos S.R.L.), the high court notes that, like the reputation of the earlier trademark, the potential fame of the person requesting that their name be registered as a trademark is one of the relevant factors to be taken into account in assessing the likelihood of confusion, to the extent that such fame may influence the relevant public’s perception of the trademark (Judgment of the Court of Justice of the European Union of June 24, 2010, Becker v. Harman International Industries, C-51/09 P, EU:C:2010:368, paragraph 37). This implies that the General Court reasonably found that Lionel Messi’s reputation constituted a relevant factor in establishing a conceptual distinction between the terms “messi” and “massi.”
3. Similarly, the General Court holds that—in response to the appellant’s argument that the General Court relied on facts and evidence presented to it for the first time—Lionel Messi’s reputation was already part of the subject matter of the dispute before EUIPO.

Furthermore, the General Court adds that the General Advocate rightly stated that, given that the notoriety of the surname “Messi”—as the surname of a world-famous soccer player and public figure—was a well-known fact, it could be known to anyone or easily ascertained using accessible sources. Those sources were available to EUIPO when it adopted its decision, and EUIPO should have taken them into account when analyzing the conceptual similarity between the MESSI and MASSI trademarks.

4. Finally, the Court of Justice determined that the appellant misinterpreted the judgment in Ruiz Picasso et al. v. OHIM (C-361/04 P), since the appellant argued in his appeal brief that the General Court had held that, under certain circumstances, conceptual differences can offset the visual and phonetic similarities between the signs in question.

In this regard, the Court of Justice notes that the global assessment of the likelihood of confusion implies that conceptual differences between two signs may counteract the visual and phonetic similarities between them, provided that at least one of those signs has, from the perspective of the relevant public, a clear and specific meaning, such that the relevant public can grasp it immediately. Therefore, given that the relevant public would perceive the signs at issue (MESSI and MASSI) as two conceptually different signs, the application of the judgment in Ruiz Picasso et al. v. OHIM (C-361/04 P) was correct.

The message conveyed by the Court of Justice in this case—in our view, quite correctly—is clear: regardless of the visual and phonetic similarities between two trademarks, there may be no likelihood of confusion if there is a marked conceptual distinction between them; therefore, Article 8(1)(b) does not apply.

This marked conceptual difference in the present case is based on the fact that the Argentine star’s surname enjoys widespread recognition among the relevant public—a well-known fact that must be taken into account so that the later trademark may be registered despite the existence of earlier MASSI trademarks. It seems obvious that, were the surname “Messi” not so well-known, the trademarks “MESSI” and “MASSI” would clearly be incompatible, and therefore the trademark application at issue here should have been denied.

The question we must now ask ourselves is whether the Court of Justice’s reasoning applies to cases in which the applicant’s trademark is not a “personality” trademark, but rather a trademark that already enjoys a high degree of recognition and awareness among the relevant public as a result of its use in the market. In other words, could a trademark’s reputation be considered a well-known fact by EUIPO, such that the acquired distinctiveness of the applied-for trademark should be regarded as a relevant factor when analyzing the likelihood of confusion with respect to prior trademarks?

We'll have to wait and see what direction EUIPO's practice takes from now on in this regard.

Author: Manuel Mínguez

Previously published in Economist & Jurist

After a few months of inactivity regarding Myanmar’s new Trademark Law—likely due to the COVID-19 pandemic—it appears that the law is finally gaining momentum. The law provides for a procedure known as the “Soft Opening Period” to allow owners who hold acquired rights to their marks in this country to register their trademarks on a priority basis. Our firm has been providing regular updates on the development of this law and this procedure. You can read previous posts on our blog by clicking on the following links:

• Myanmar Lays the Groundwork for Trademark Protection
• Myanmar: A “soft opening” period for trademark owners registered with the Office of Registration of Deeds is set to begin in January 2020

Since the law took effect on January 31, 2019, there have been several attempts to launch the office and begin its operations. So far, all of them have been thwarted for one reason or another. The challenge of creating a trademark office from scratch in a country like Myanmar, combined with the unfortunate global situation resulting from the spread of COVID-19 so far in 2020, has caused a significant halt and delay in this ambitious project.

Well, following the successive failed announcements of the start of the “Soft Opening period”— first last January and then in April—the Burmese authorities have announced a new start date for the process. If no unforeseen circumstances derail the government’s plans, this expedited procedure for registering acquired rights will begin on October 1, 2020.

We would like to remind you that the new trademark law introduces the “first to file” registration principle . To avoid prejudicing the rights acquired by trademark owners whose trademarks have already been used in the Burmese market and/or who have complied with the formal requirements previously available for the protection of trademarks in this country, those who meet the relevant conditions will have six months, from October 1 through March 31, 2021, to file for their trademark rights with the trademark office. Once the “Soft Opening Period” ends, registration will be open to any interested party.

The preferred procedure is intended for:

• Holders of declarations registered in the “Declaration of Ownership at the ORD.”
• Proprietors who have used their trademarks and have sufficient evidence to prove it (for example, publication of preliminary injunctions in newspapers).

ELZABURU has been monitoring the new trademark law since its inception and has a network of local colleagues who provide ongoing updates and information. As a result, we are prepared to assist our clients in protecting their distinctive signs in this country, now as trademark rights.

Author: Cristina Arroyo

Judgment of the Court of Justice of June 11, 2020 (C-115/19 P)

On October 14, 2014, CHINA CONSTRUCTION BANK CORP. filed an application for the European Union figurative mark Fig. 1 in Class 36. The French entity GROUPEMENT DE CARTES BANCAIRES filed an opposition based on the European Union figurative trademark shown in Fig. 2in Class 36. The opposition was based on Articles 8(1)(b) and 8(5) of the EUTM Regulation.

Fig. 1 Fig. 2

The Opposition Division upheld the opposition by applying only Article 8(1)(b) of the EU Trade Mark Regulation. The applicant’s subsequent appeal was dismissed by decision of June 14, 2017 (R-2265/2016/1). The EUIPO Board of Appeal took into account, primarily, the reputation of the CB mark in France and found that, at least in France, there was a likelihood of confusion between the conflicting marks. Based on these circumstances, it upheld the refusal of the figurative mark CCB by applying Article 8(1)(b) of the EUTMR.

The appeal before the General Court (GC) was dismissed by judgment of December 6, 2018 (T-665/17). It is worth noting that the GC reaffirmed the high degree of distinctiveness of the earlier CB trademark in France in relation to “bank cards.” Furthermore, it took this reputation into account when assessing the similarity between the distinctive elements of the trademarks at issue. Finally, the GC extended the recognition of that reputation to the following services, which it considered a general category: financial services, monetary services, and banking services.

In its statement of grounds for the appeal, CHINA CONSTRUCTION BANK CORP. argued, among other things and as its first ground, that the General Court had erred in law by taking into account, during the phase of its examination involving the assessment of the similarity between the conflicting signs, the reputation of the earlier trademark, and by again taking that reputation into account in the overall assessment of the likelihood of confusion; thus, the General Court had twice taken into account the high distinctiveness of the earlier trademark. It also alleged a lack of reasoning and, in particular, that the General Court had failed to provide a rationale for its finding that the earlier trademark enjoyed a reputation and therefore possessed a high degree of distinctiveness with respect to financial services, monetary services, and banking services; it also criticized the fact that the General Court’s judgment had not explained why the evidence of use of the earlier mark, which specifically related to payment cards, could justify such a general conclusion.

In its June 11, 2020, judgment (C-115/19), the Court of Justice upheld both grounds and set aside both the General Court’s judgment and the decision of the EUIPO Board of Appeal. In this brief commentary, we will focus on analyzing the first ground of appeal and, in particular, on the role played by the high degree of distinctiveness or the reputation of the earlier mark when applying Article 8(1)(b) of the EU Trade Mark Regulation.

As is well known, this article requires the cumulative presence of the following three circumstances for its application: a) Identity or similarity between the signs comprising the trademarks in dispute; b) Identity or similarity between the goods and/or services distinguished by the respective trademarks; c) that the concurrence of the foregoing circumstances leads the public to believe that the goods or services covered by the prior trademark and those covered by the applied-for trademark originate from the same company or, where applicable, from economically related companies; that is, a risk of direct confusion or a risk of indirect confusion (risk of association).

Well, the Court of Justice clarifies in the judgment we are discussing that the “renown or high distinctiveness of the earlier trademark cannot be taken into account when examining the similarity between the distinctive elements that make up the trademarks in dispute, since —unlike the factor of similarity between the conflicting signs—the factor of the reputation and distinctiveness of the earlier trademark does not involve a comparison between several signs, but rather refers solely to a single sign; namely, the one that the opponent has registered as a trademark. Since, therefore, these two factors have fundamentally different scopes, an examination of one of them does not allow conclusions to be drawn regarding the other. Even if the earlier trademark has a high degree of distinctiveness due to its reputation, that circumstance does not allow for a determination of whether that trademark is similar to the trademark applied for in visual, phonetic, and conceptual terms, and, if it is similar, to what degree.”

In fact, the assessment of the similarity of the conflicting signs consists of a visual, phonetic, and conceptual comparison based on the overall impression that such signs leave in the memory of the relevant public, taking into account their intrinsic qualities. It can be stated that the examination of the similarity of the signs referred to in the first of the factors necessary for applying Article 8(1)(b) of the EU Trade Mark Regulation must follow fundamentally objective criteria (dominant element, vowel scale, etc.) which, moreover, are predetermined by the set of elements that make up the marks in dispute, as they appear in the Trademark Register. Under no circumstances may the reputation or high distinctiveness of the earlier trademark influence this comparative analysis.

A separate issue is the influence of the prior trademark’s reputation when analyzing the third of the cumulative circumstances required by Article 8(1)(b) of the EUTM Regulation, which refers to the existence of a likelihood of confusion or association, since such a likelihood may be more probable if the prior trademark has a reputation or a high degree of distinctiveness. In other words, reputation may justify applying a higher standard of scrutiny when assessing whether there is a likelihood of confusion or association between the conflicting trademarks, but such a standard cannot be applied to the prior and necessary factor of whether or not there is similarity between the trademarks themselves.

In any case—and to conclude—it cannot be overlooked that in those instances where there is some degree of objective similarity between the distinctive elements of the trademarks, but this similarity is not sufficient to create a risk of confusion or association among the public that would preclude the application of Article 8.1.b of the EUTM Regulation, it may still be possible to invoke Article 8(5) of the EUTM Regulation if the circumstances required for its application under that provision are met. In this regard, we must recall that, according to extensive case law, the degree of similarity between the conflicting signs required to apply Article 8(5) of the EUTM Regulation is lower than that required under Article 8(1)(b) of the EUTM Regulation. Furthermore, the existence of a link between the two trademarks, as established by Article 8.5 of the EUTM Regulation, is—also according to European case law—more likely to occur the greater the reputation of the earlier trademark.

Author:Jesús Gómez Montero, Former Partner at ELZABURU and Member of the Advisory Committee of the Alberto Elzaburu Foundation

There's no doubt that these times of lockdown give us the opportunity to mull over curiosities that we might not have noticed under normal circumstances.

For a professional in the field of industrial and intellectual property law—such as the author of this article—one of those questions is undoubtedly how many people have had the idea of capitalizing on the “trending brand” of the moment: COVID-19.

If you check the data, the figures provided by the Spanish Patent and Trademark Office’s website show that from March 12 through May 5, no fewer than 16 trademark or trade name applications have been filed that consist of or contain the term “COVID-19” (all of them, incidentally, filed on behalf of individuals or legal entities domiciled in Spain).

Contrary to some reports that have appeared in various media outlets, it should be noted that none of these requests has yet been granted.

This means, quite simply, that there is not a single citizen today who can claim to have obtained a registered right to the name “COVID-19,” or to any other name that includes it as part of the distinctive combination for which official protection is sought.

Of all these applications, 9 have not yet been subject to an initial examination by the Office, while the processing of the remaining ones has been suspended by the official examiners based on the prohibition set forth in Article 5.1, (f) of Law 17/2001 of December 7, on Trademarks, which prohibits the registration of signs that are “…contrary to the law, public order, or public morals.”

It is worth noting, in this regard, that in all cases, the official notices suspending those seven applications contain—pursuant to the aforementioned article—the following observation: “The sign applied for is deemed to fall under the prohibition established in Article 5.1.f of Law 17/2001 of December 7, on Trademarks, since the mark applied for is contrary to public morals, as it may offend the sensibilities of a broad segment of society by attempting to derive commercial profit by including in the mark the identifying part of the name of a virus that is causing great suffering in our country and around the world.”

We will need to keep a close eye on the final ruling issued by our highest trademark authority regarding the potential registrability of the term “COVID-19,” although it cannot be ruled out that, in cases where applicants specify that the purpose of their application is to protect public health, a favorable decision may be granted.

Aside from that, other related questions arise that may be of greater interest to the average citizen than to a legal professional: Is “COVID-19” truly a trademark that can be commercially exploited with reasonable expectations of profitability? How can products and services be marketed in such a way that “COVID-19” becomes an attractive trademark that encourages the public to consume those products or purchase those services? And, furthermore, if any of the applicants were to obtain registration, to what extent could they prevent third parties from using the term “COVID-19” for commercial purposes in connection with goods or services that are identical or similar to those for which they obtained such registration?

Only time will tell whether we can find an answer to these questions, but it is curious, to say the least, that a name with such a “diabolical” meaning has already been the subject of trademark registration attempts in connection with products such as jewelry, toys, and footwear—or with legal services, to name just a few examples.

What is indisputable is that, even in times as difficult as those caused by a terrible pandemic, we Spaniards are well aware that the primary means of ensuring and protecting the viability of a business venture—whatever its nature—is to obtain a trademark registration.

Author: Luis Beneyto

The amount of compensation received by an individual who imports products that infringe a trademark on behalf of a third party is irrelevant when determining whether or not infringement has occurred.

Judgment of the Court of Justice of April 30, 2020, in Case C‑772/18, INA Case

Company “A” is the owner of international trademark No. 709,735, “INA,” designating Finland. An individual (“B”) received a shipment of products (bearings) bearing the INA trademark from China at the Helsinki airport. “B” subsequently stored the products, which were then transported (apparently by a third party) to Russia. As compensation for his services, “B” received a carton of cigarettes and a bottle of cognac.

The Prosecutor’s Office filed a criminal complaint regarding this matter, arguing that “B,” through the importation of these counterfeit products, had infringed upon the INA trademark. Company “A” joined the complaint, seeking compensation for damages and an injunction prohibiting “B” from continuing to import the counterfeit products. The Court dismissed the criminal complaint, finding that “B’s” intent in committing the offense had not been proven. However, it granted “A’s” request for an import ban and compensation; nevertheless, it reduced the amount to be paid by “B” to one-third, based on “B’s” particular circumstances.

The criminal case was dismissed. However, both parties appealed the court’s decision regarding the claim for damages. The Court of Appeals granted “B’s” appeal and exempted him from paying the damages. The Court found that “B” had merely received the goods on consignment, had no intent to make a profit in the context of a commercial activity, and had not used the infringing trademark in the course of trade.

Company “A” filed an appeal with the Supreme Court, which stayed the proceedings and raised several preliminary questions that the Court of Justice consolidated into a single one.

Click here to view the opinion on the preliminary ruling and the court's response.

Author: Jesús Gómez Montero
Former Partner at ELZABURU and Member of the Advisory Committee of the Alberto Elzaburu Foundation

The Court of Justice “clarifies” what role the relevant public or the average consumer should play in analyzing the prohibition on the registration of (three-dimensional) shape trademarks whose subject matter may fulfill a technical function or confer substantial value on the product.

Judgment of the Court of Justice of April 23, 2020, in Case C‑237/19, the Gömböc Case

On February 15, 2015, the Hungarian company Gömböc Kft. filed a trademark application consisting of a three-dimensional sign to distinguish decorative articles (Class 14), decorative articles made of glass and earthenware (Class 21), and toys (Class 28).

The Hungarian Office refused to register the trademark on the grounds that the sign for which registration was sought represented a three-dimensional object which, due to its external design and the homogeneous material used, always returns to its equilibrium position; and that the shape of that object served, in its entirety, to achieve the technical objective of ensuring that it always straightens out (Art. 2.2(b) of the Hungarian Trademark Act = Art. 3.1(e)(ii) and (iii) of Directive 2008/95 on Trademarks).

More specifically, the Office found that, with regard to toys, the object—which always returns to its equilibrium position—was composed of elements designed to achieve that purpose; therefore, those elements fulfill a technical function, and the object is also designed to achieve a specific technical result. With regard to decorative items, the Office held that the object embodied an attractive and decorative design with a casual appearance that influenced the consumer’s purchasing decision and, therefore, added substantial value to the product, which, moreover, had become the “tangible symbol of a mathematical discovery that has provided answers to questions concerning the history of science.”

In assessing the grounds for refusing this trademark, the Office took into account not only the graphic representation of the sign as it appeared in the trademark application file, but also evaluated the relevant public’s perception of that object. In the Office’s view, the public knew from advertising and use of the product that it always returned to its equilibrium position (that is, it fulfilled a technical function). Furthermore, the public also knew that the product embodied the symbolic value of the mathematical discovery described above (and therefore attributed substantial value to the product).

The additional consideration taken into account by the Office in support of its grounds for refusal—particularly with regard to the decorative elements—stemmed from the fact that the subject matter of the trademark was already protected as an industrial design. This circumstance, in the Office’s view, confirmed that such an object—which met the requirement of distinctiveness required for designs—served a decorative function and had an aesthetic appearance that added substantial value to the product.

The refusal to register the trademark was appealed through the various courts all the way to the Hungarian Supreme Court. In light of the doubts raised in resolving the matter, the Supreme Court referred a series of preliminary ruling questions to the Court of Justice (CJ), which are detailed below.

If you would like more details about the ruling, please view the full document.

Author: Jesús Gómez Montero
Former Partner at ELZABURU and Member of the Advisory Committee of the Alberto Elzaburu Foundation

PEACE OF MIND is the guiding principle for any holder of industrial and intellectual property rights starting at midnight tonight—that is, when Brexit, the United Kingdom’s exit from the European Union, takes effect at 12:00 a.m. CET.

Despite the storm clouds that at one point in 2019 foreshadowed an abrupt exit of the United Kingdom from the EU, an agreement has finally been reached that, in addition to setting the terms for that exit, provides for a transition period that, in principle, will last until December 31, 2020, EU law will continue to apply in the United Kingdom. This transition period therefore applies to the Regulations governing the European Union trademark and Community designs, the Regulation governing border measures to combat commercial piracy, and the procedural Regulations applicable to the pursuit of legal actions, among others. It should also be noted that European patents will not be affected by Brexit, since the European Patent Convention, which governs the granting of such patents, is not part of the EU legal system.

The effects of Brexit on industrial and intellectual property rights and other related matters are therefore postponed until January 1, 2021.

ELZABURU se propone enviar durante los próximos meses circulares informativas sobre las consecuencias del Brexit en relación con solicitudes y registros de marcas de la Unión Europea y registros internacionales de marca que designen la UE; también sobre los efectos del Brexit en materia de dibujos y modelos comunitarios; en relación con variedades vegetales y nombres de dominio <.eu>; sobre las solicitudes de intervención aduanera; sobre los procedimientos judiciales en curso o por iniciar; sobre la falta de incidencia hoy por hoy en cuestiones relativas a la patente europea; sobre procedimientos de oposición, nulidad y caducidad de derechos, así como cuestiones relacionadas con la representación para actuar ante la EUIPO.

For now, the message is clear. From February 1 through the end of the transition period, scheduled for December 31, 2020, everything will remain the same in practice: procedures regarding trademarks, designs, and other intangible assets will continue to operate as they have to date.

If you have any questions, please contact brexit@elzaburu.es.

Visit our website:http://www.elzaburu.com/

Malaysia was the last country in Southeast Asia to deposit its instrument of accession to the Madrid Protocol. On September 27, 2019, this historic milestone took place, placing Malaysia among the 122 members of the Madrid System for the international registration of trademarks.

Among the major countries in Southeast Asia, Malaysia and Myanmar (formerly Burma) were the only ones that had not yet joined this practical and effective system for managing trademarks worldwide. The following countries are part of the system: Singapore, Vietnam, Laos, the Philippines, Cambodia, Brunei Darussalam, Thailand, and Indonesia. Myanmar is now the only country in the region that does not allow for the international registration of trademarks through the Madrid System; however, it is expected to do so in 2020, once its new Trademark Law has been implemented and its administrative system is fully operational. East Timor and other small dependent territories will remain outside the Madrid System, as their accession is undoubtedly very unlikely in the short to medium term.

Like other countries in the Madrid System—particularly neighboring Singapore— Malaysia has reserved certain rights that allow it to adapt international regulations to local ones. Among these, when designating Malaysia through the international system, it is important to note that this country requires a declaration of intent to use the trademark and that such a declaration is deemed to have been implicitly made during the application process. Like some Protocol countries, the deadline for notifying provisional refusals will be extended to 18 months or may be exceeded in the event of an opposition, which may result in a lengthening of the proceedings, as well as various other considerations that Protocol member countries may adopt.

Malaysia’s accession to the Madrid Protocol took effect on December 27, 2019. To achieve this goal, the Malaysian authorities had to go through a lengthy preparation process to finally enact their new Trademark Law, which specifically provides for the country’s accession to the Madrid System and which took effect on the same date.

The new Malaysian law opens registration to non-traditional signs that can be graphically represented (color marks, sound marks, holograms, etc.), collective marks, and multi-class marks, as well as new official deadlines that are more in line with those of other jurisdictions. These are some of the key issues addressed by the new law, which reflect a significant effort to modernize and adapt to the changing times.

Authors:Cristina Arroyo and Juan Miguel Sáinz de Marles