The Swiss trademark application no. 63209/2015 had been rejected by the IPI already back in December 2016. The rejection had been upheld by the FAC with decision of 30 July 2018, and the Supreme Court now finally approved the rejection with decision of 3 January 2018. This is the logo for which protection had been sought for:
Frankly, the decision is not out of the ordinary, from a Swiss perspective. What surprised me, however, is that the very same abbreviation had been trademarked all around the world, in many variations; see the Global Brand Database.
Other offices apparently take a less strict approach.
Apple surely is one of the most iconic brands. The look and feel of Apple is still pretty unique, in my perception. But every successful brand is challenged once in a while, and this is very likely not the first time that Apple intervenes against others using or claiming ‘their’ bite in something.
Still, this is a special one. Apple lodged a trademark opposition based on its older trademarks CH P-502’206 (which is the iconic apple with a bite); and CH 640’382 (which apparently is only the leaf thereof):
The trademark in dispute was the Swiss part of IR 1’292’997 that incorporates some elements of Apple’s trademarks:
Still, Apple’s attempt to get the trademark canceled had been unsuccessful in first instance at the IPI (order of 24 January 2017; unpublished). Apple appealed — and lost again at the FAC; decision of 10 January 2019.
In a nutshell, the FAC held that despite some visual similarities of the trademarks, there was no likelihood of confusion. First, the characteristic feature of the CH’206 trademark, i.e. the apple, is not found in the trademark in dispute. And second, even though CH’382 is identically featured as a minor part of the trademark in dispute, its overall visual appearance is different; the FAC held that the leaf is only a trivial symbol, and its distinctiveness is low.
Noteworthy, the defendant did not participate by any means in the proceedings, neither in writing nor at the hearing.
The present trademark dispute was not the first clash of the parties. The trademark owner and his brother founded a company in Italy that is named after Apple’s godfather Steve JOBS† who sadly passed away in 2011 at the age of only 56: The name of the company is Steve Jobs Inc. (no kidding!).
What likely had raised even more concern in Cupertino than the mere logo and the name of the company was the registration of the logo combined with the name ‘Steve Jobs’ as an EU trademark (No. 011041861).
Apple’s opposition against the stylized trademark had been rejected by an opposition division of the EUIPO already in 2014.
And, even worse: The brothers also got an EU trademark with just the words ‘Steve Jobs’ registered (No. 011687316). I could hardly believe it, but it seems to be true: Apple never applied for a trademark ‘Steve Jobs’. The plain ‘Steve Jobs’ trademark remained unapposed.
Steve Jobs Inc. apparently started with fashion. With jeans! I cannot recall a single keynote given by Steve JOBS† without his jeans …
Steve Jobs Inc. seemingly envisages to step onto Apple’s home turf with electronics and smartphones; see this report in ‘The Telegraph’ of 29 December 2017.
I cannot help but wonder whether we will see additional action taken by Apple against Steve Jobs Inc.
Richemont’s trademark application 58809/2016, a stylised fish, for watches etc. in class 14 had been rejected. The IPI held that the sign was of religious content, and its commercial use would offend the religious feelings of an average member of Christianity. The rejection was based on Art. 2 lit. d TmPA, i.e. the sign was held to be contrary to morality.
Still, there are differences: The comparatively large caudal fin, in relation to the body; and the fin is closed in Richemont’s version, but open in the Ichthys symbol. However, both the IPI and the FAC held that these differences do not alter the overall impression of the sign which is still perceived as an Ichthys symbol; ¶4.5.
Next, the FAC had to assess whether the use of the sign as a trademark was likely to offend the religious feelings of an average member of Christianity.
Prior case-law had rejected trademark applications when they concerned figures who occupy a central position in the respective religions; e.g., the FAC had confirmed the IPI’s rejection of the trademark ‘Madonna (fig.)’, IR 855’013, with decision B-2419/2008 of 12 April 2010, and the Supreme Court again confirmed this assessment; 136 III 474, decision of 22 September 2010.
The FAC reiterated again from its prior ‘Madonna (fig.)’ decision that the position of the religious figure in the respective belief system must be examined. The mere fact that the Madonna was not part of the Trinity did not exlude immorality. The intense veneration of the Madonna, which clearly goes beyond the veneration of certain saints, suggests a central role for the majority of Christians belonging to the Catholic Church. It followed that, under certain circumstances, the commercial use of signs which are not directly central to a religious community may still be considered immoral. On the other hand, not every use of a sign that has a religious meaning is automatically immoral. Rather, the disputed sign must play a central role in the religious community in question. The sign must have an important religious meaning and the commercialization of the sign must be likely to violate religious feelings of the member of this religion and endangering social peace, for it to be excluded as immoral.
Now, is the stylised fish really a central symbol of Christianity, as the IPI had argued?
The FAC held that this is not the case. In comparison with the signs previously regarded as immoral because of the violation of religious feelings, the disputed mark has no important religious meaning; ¶5.4.
Im Vergleich mit den bisher wegen Verletzung des religiösen Empfindens als sittenwidrig erachteten Zeichen kommt der strittigen Marke […] kein wichtiger religiöser Sinngehalt zu.
The FAC noted that the fish symbol surely had an essential meaning in early Christianity, but it already existed in very different forms at that time. The symbol, consisting of two curved lines, then essentially got forgotten for almost two millennia. It was not until the 1970s that it was rediscovered in its present form. As a symbol for Jesus, however, the sign is rather secondary. The central sign of Christianity is and remains the cross (see ‘Das Kreuz mit dem Fisch‘, referred to in the decision).
Although the Ichthys symbol is relatively widespread, its religious significance for Christianity is not on the same level as the Trinity (Father, Son and Holy Spirit) or the Cross symbol. The meaning of the sign is also not comparable with the value of the Mother of Jesus (Madonna), who is intensely venerated, which is why she also has a central role. The Ichthys symbol does not play such a central role. The symbol is not used by name in religious rites, is neither venerated nor worshiped.
The meaning of the fish symbol thus shares the fate of numerous other Christian signs which have religious connotations, but which do not play a central role in the religious community or in religious symbolism, such as the signs Alpha and Omega, Anchor, Dove, Water, etc. (see e.g. ‘Symbole des Christentums‘ (Wikipedia) and ‘Christliche Symbole‘, both referred to in the decision).
Accordingly, the FAC held that it cannot reasonably be assumed that the commercialization of the Richemont fish is likely to violate the religious feelings of the average member of Christianity, in particular since extreme sensitivities are not taken into account (see 136 III 474, ¶4.2). Further, the FAC noted that there are numerous previous registrations of marks which clearly identify the disputed Ichthys symbol, and similar signs have been used in commerce for a long time without any apparent violation of religious sensibilities.
As always, I cannot help but wonder about the background of the matter: What’s the purpose of Richemont’s fish?
Frankly, I don’t know.
But what comes to my mind is that IWC (a Richemont brand) formerly used a fish on the crown to indicate that the watch was water-resistant.
See the fish symbol on the crown of an IWC Big Pilot Ref. 5002 ‘Transitional’ here. In more recent times, IWC used their ‘Probus Scafusia’ logo on the crowns.
Nothing is currently surfacing at the FPC. So I dissected yet another trademark case over the holidays, this time from the Supreme Court.
To put this case in context, it is helpful to know that WILD Heerbrugg was a Swiss company established in 1921 that produced high quality optical instruments; see the Virtual Archive of WILD Heerbrugg for further information. The company merged with Ernst Leitz Wetzlar GmbH in 1986 to form the WILD Leitz Group.
When Leica Holding B.V. was established in 1990, the name ‘WILD’ disappeared. After Leica Camera was spun off in 1996, the remaining group split into Leica Geosystems and Leica Microsystems in 1997.
But the name ‘WILD’ did not disappear completely; it still lives on: The former Austrian production site of WILD Heerbrugg was transformed into the WILD group of companies.
The old trademark ‘WILD Heerbrugg’ and some related signs had been abandoned by the aforementioned companies. However, the plaintiff in the present matter apparently got interested in them later — and troubled both Leica and the WILD Group.
I could not spot any connection between the plaintiff and the former Wild Heerbrugg company, neither in the judgment nor by my own research. The defendant countersued for nullity of Mr Oelmayer’s trademark and argued that it was an abusive registration.
Note that this ground of nullity is not codified in the TmPA. But according to established case law of the Supreme Court, no protection can be claimed for registered trademarks if they have not been filed for the purpose of use, but with the intention of preventing the registration of corresponding signs by third parties, of increasing the scope of protection of actually used trademarks (127 III 160, ¶1a) or of obtaining financial or other advantages from the previous user (4A_429/2011, ¶3.2; 4C.82/2007, ¶2.1.4). The absence of an intention to use entails the invalidity of the registered trademark (127 III 160, ¶1a; 4A_429/2011, ¶3.2; 4C.82/2007, ¶2.1.5). The inadmissibility of such trademarks registered without the intention to use them and thus of misuse constitutes, in addition to the non-inclusion of use (Art. 12(1) TmPA), an independent fact for the loss of the trademark right, and the respective owner of the trademark cannot invoke the grace period for use (4A_429/2011, ¶3.2; 4C.82/2007, ¶2.1.5).
And, indeed, the Commercial Court Berne held on the basis of various circumstances that Mr Oelmayer filed the trademark ‘WILD HEERBRUGG’ (see Swissreg, CH 624 864) — as well as an earlier stylised trademark ‘WILD HEERBRUGG’ (see Swissreg, CH 567 937) which was not the subject of the dispute — without the intention to actually use it, but with the intention to attack existing trademarks and to demand money for the settlement of trademark disputes. By registering the word trademark ‘WILD HEERBRUGG’, the applicant sought, in disputes with Leica Geosystems AG, Leica Microsystems Holdings GmbH and with WILD Elektronik und Kunststoff GmbH & Co KG, to counter the objection that the grace period for the use of the earlier stylised trademark ‘WILD HEERBRUGG’ (CH’937) had expired. The Commercial Court therefore held that the filing of the trademark ‘WILD HEERBRUGG’ (CH’864) was abusive. Defendant’s counterclaim for invalidity of Mr Oelmayer’s trademark was thus approved. All costs were clapped on the plaintiff, in view of the abuse.
Plaintiff’s initial claim had been written off because it had become devoid of purpose: Defendant’s Swiss designation of the international trademark had not been renewed in 2014. In my understanding, this happened by accident. The defendant later applied for a Swiss national trademark; see Swissreg, CH 675 230.
Opposition proceedings between the same parties are currently pending at the IPI.
Now, how does a court determine the lack of an intention to actually use a trademark?
In general terms, the person who derives rights from it must prove a fact (Art. 8 CC); thus, the party who invokes this ground for invalidity (cf. 127 III 160, ¶1a) bears the burden of proof for the lack of intention to use. However, the lack of intention to use is a negative and, moreover, an internal fact which can hardly be proven positively. The Supreme Court therefore assumed with the doctrine that, within the framework of the duty to cooperate, the opposing party may be required to document or at least claim the reasons why the registration of the trademark forms part of a fair trademark strategy, despite the inconsistencies which the plaintiff had pointed to. If this explanation appears to the judge to be untrustworthy, the abstract proof must suffice for the typically defensive constellation within the overall assessment (4A_429/2011, ¶5.1 with reference to EUGEN MARBACH, Markenrecht, SIWR Bd. III/1, 2nd ed. 2009, ¶1446).
Mr Oelmayer lodged an appeal to the Supreme Court, but failed.
The Supreme Court held that the Commercial Court had established the facts well in accordance with the law, and parties cannot allege facts beyond that; Art. 105 (1) FCA. If, for example, the appellant submitted to the Supreme Court that he had documented acts of use (preparation) and thus emphasised his abstract will to use by preparing a business plan two years before filing the application, submitting a license agreement concluded in 2014, applying for several patents (which I could not spot in [email protected]), seeking financing possibilities and presenting the “surgical microscope” project, he only criticised in an inadmissible manner the assessment of evidence in the first instance. By asserting that the 2014 license agreement had at least implicitly existed since the trademark had been filed, because it had been intended from the outset to license or transfer the trademark to the company to be established, he departs from the findings of fact in the contested decision without raising a sufficient complaint in this respect. Further, the Supreme Court held that the appellant did not raise any admissible objection in connection with the determination of the Commercial Court that the procedural conduct of the appellant indicated that his evidence of intention to use had either only been alleged or had only been produced with a view to the pending proceedings. The same applies to the findings in the contested decision, according to which his actions with regard to the trademark registrations indicate the intention to be bought out of the way by the parties concerned or according to which there are concrete indications that the appellant was seeking to negotiate financial advantages.
The Supreme Court thus dismissed the appeal; the judgment is now final.
Reported by Martin WILMING
1 The decision is partially anonymised, but the name Oelmayer is still mentioned in plain language (¶A.h). Anyway, the parties are most easily identifiable with Swissreg based on the trademarks at stake. Since Thomas Oelmayer is a public person (see Wikipedia), I chose to not beat around the bush, in accordance with the Codex of this Blog — take me back ↺
Glycine had been distributing and promoting its watches under its old label already for quite a long time, and the old logo had not been objected to by Armani. But Armani felt uncomfortable with Glycine’s new logo that had been introduced in 2015. It is the design of the crown that had been changed: The crown seemingly got wings … — or is it an eagle?
Glycine had sought trademark protection for both the old and the new logo, as follows:
Armani considered that Glycine’s new logo would create a likelihood of confusion with its own brand. After having sent warning letters to Invicta Watch Company of America, Inc. (the American parent company of Glycine Watch SA) and also directly to Glycine Watch SA, Armani finally brought an action before the Commercial Court Berne. Armani requested that Glycine Watch SA be ordered to abstain from using the stylised ‘wing crown’ logo and the word ‘AIRMAN’, based on both its earlier trademark rights and the Swiss Act against Unfair Competition (UCA).
The Commercial Court Berne indeed forbid the use of the logo
with and w/o the additional word ‘AIRMAN’. An appeal is currently pending at the Supreme Court.
It is always interesting to compare decisions of different courts and offices. Armani had also filed an opposition against the corresponding European Union trademark no. 015910301 with the EUIPO, based on its older trademark no. 015743891.
The EUIPO rejected Armani’s opposition (case no. B 2 832 882); see the decision here. An appeal is currently still pending.
While the case before the EUIPO was an opposition and the one before the Commercial Court Berne was a trademark infringement case, both had to assess similar issues. The Commercial Court Berne took notice of the EUIPO’s earlier decision (¶34.3.5), but did not agree in respect of the similarity of the signs and the degree of brand awareness.
The Opposition Division of the EUIPO had concluded that insufficient evidence had been submitted to support the assumption of a well-known mark. Consequently, it considered the distinctiveness of Armani’s mark as just normal. As to the similarity of the signs, the EUIPO held (¶e, fourth paragraph) that
[…] the distinctive verbal element ‘GLYCINE’ is of primary importance and the figurative element is of less impact. […], the presence of the term ‘GLYCINE’, on goods bearing the contested mark, in conjunction with a markedly different bird device is sufficient to avoid confusion.
In striking contrast, the Commercial Court Berne concluded that the plaintiff’s trademarks were indeed well-known trademarks, with an extended scope also for watches (¶31.3.3):
The Court considers the reputation of the applicant’s marks […] for fashion to be notorious. […] Furthermore, the Court assumes that the resulting extended scope of protection must also be affirmed for watches, as very common fashion accessories.
The Commercial Court Berne neither agreed with the EUIPO’s assessment of similiarity of the signs, but rather applied the regular principle that even the addition of an entirely different word element does not alter the similarity of the signs in the case of an identical or only slightly altered adoption of the dominant figurative element; ¶¶34.2.2, 34.3.4.
Despite the size of the word element, the figurative element is better remembered in this case because, due to its visual similarity, it evokes a reflexive association with the plaintiff’s well-known eagle marks and is thus characteristic of the overall impression.
It will be interesting to follow the further course of the proceedings at the appeal stage, both at the Swiss Supreme Court and the EUIPO.
No, it is not that I am going to change my practice regarding de-anonmyization. Rather, the FPC changed its practice as of June 1, 2018:
Judgments in ordinary proceedings had typically not been anonymized anyway, but final decisions in summary proceedings had only been published in anonymized form by now. Those days are gone. The FPC will now publish all final decisions in full and non-anonymized form, also in summary proceedings — unless anonymization is warranted by a public interest or requested by a party and deemed justified for the protection of private interests.
Decisions granting or denying legal aid are always anonymized if published.
There is so much information around. But one can spend ages with searching.
Here are some shortcuts:
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AND, FINALLY …
Well, this one has nothing to do with searches. But it might prove useful: A kind of ‘baby hatch’ for any document that you feel might be of interest for this Blog. Just upload your PDF (sorry, no other file type) here:
No decision to report this time. But if you happen to attend the BIO International Convention in San Francisco on June 6-9 and if you would like to discuss any IP related topics, I will be more than happy to have a chat.
Sometimes it takes me a while to draft a meaningful and reasonably investigated post; I am not going to spoil this Blog with half-baked stuff. On the other hand, I’d like to share information that is readily available as soon as possible. I will use Twitter (@FPCReview) from now on to share such advance information.
Starting off right now (if you haven’t seen the tweet already):