Hasbro has had an EU trademark for the Monopoly board game partially invalidated after the EU General Court found its filing strategy was designed to avoid proving genuine use.
In a judgment issued on April 21, the court upheld an earlier decision from the European Union Intellectual Property Office (EUIPO), which considered Hasbro to have acted in bad faith.
The ruling comes after a lawsuit filed by Croatian board game seller Kreativni Događaji, which sought the invalidation of an EU ‘Monopoly’ trademark registered in 2011.
According to the court, Hasbro’s 2011 mark was identical with respect to certain goods and services as earlier ‘Monopoly’ trademarks. The purpose of refiling the mark was to avoid having to prove genuine use, the EUIPO ruled in 2019. Under EU law, trademarks granted by the EUIPO can be invalidated if the owner cannot prove genuine use five years after the mark was registered.
The EUIPO invalidated the trademark for goods and services in classes 9, 16, 28 and 41, which include games and entertainment.
Hasbro appealed to the General Court, arguing that Monopoly was “so famous that it would be fanciful to suggest it has not used the trademark in connection with games”.
“Hasbro argues that requiring it to prove use of that mark in connection with board games in invalidity proceedings would result in its incurring significant costs,” and would lead to the EUIPO being “swamped in cases in which bad faith would be invoked with regard to any re-filed mark covering identical or similar goods or services,” court documents stated.
GENUINE USE
The court rejected these arguments, finding ample evidence that Hasbro had acted in bad faith to uphold the EUIPO’s decision.
According to the court, Hasbro admitted during proceedings that “one of the advantages which justified the filing of the contested mark was not having to furnish proof of genuine use of that mark” and claimed this was “common and accepted” practice in the industry.
“Hasbro confines itself to claiming that the re-filing of earlier marks is a common practice without providing any evidence whatsoever in support of that claim,” the court noted, adding that EU law did not allow it to “rule out any bad faith on the part of the applicant on the ground that it was following a practice that was common in the industry and that it acted in accordance with advice from counsel”.
The court also ordered Hasbro to pay legal costs incurred by Kreativni Događaji during proceedings before the EUIPO.
Image: Shutterstock.com / txking
“Hasbro confines itself to claiming that the re-filing of earlier marks is a common practice without providing any evidence whatsoever in support of that claim.”
EU General Court
Nintendo has secured an injunction against a Vietnamese Amazon seller whose devices allow users to play pirated video games on the Switch console.
The judgment, handed down by the US District Court for the Western District of Washington on April 15, is a victory for Nintendo in its legal campaign to crack down on pirated Switch games.
In this case, Nintendo sued Le Hoang Minh, a Vietnamese citizen who trades on Amazon as Winmart. According to court documents, the defendant did not file a counter-pleading at the court but did submit a defence against Nintendo’s copyright claims to Amazon.
The devices at issue are known as RCM Loaders which, Nintendo says, use software to “hack” the console to allow it to play unlicensed video games.
After the order, Winmart is now prohibited from selling the devices, or any devices designed for “circumventing the technological security measures for Nintendo’s consoles” in the US.
In its motion for an injunction, Nintendo said Winmart had “abused” the Digital Millennium Copyright Act (DMCA) in order to try to keep the RCM Loaders available for sale on US e-commerce platforms including Amazon.
“Nintendo will be prejudiced without entry of default judgment because it will have no remedy against defendant, a foreign citizen living in Vietnam.”
Nintendo
COUNTERNOTIFICATION
Amazon temporarily removed the devices from its platform following a copyright infringement notice from Nintendo, but Winmart filed a DMCA counternotification arguing the devices had been removed either by mistake or misidentification.
Such counternotifications are sworn statements made under penalty of perjury, but Nintendo told the court it was effectively unenforceable against a seller based in Vietnam.
Nintendo subsequently informed Amazon that it intended to sue Winmart to prevent the relisting of the RCM Loaders on the platform.
“Nintendo will be prejudiced without entry of default judgment because it will have no remedy against defendant, a foreign citizen living in Vietnam who abuses the DMCA counternotification procedure to keep its illegal devices on US e-commerce platforms,” the Japanese company told the court.
Image: Shutterstock.com / skvalval
Chanel has failed to stop Huawei using a trademark that the fashion house had argued bore too much resemblance to its own logo after an EU court ruled that the marks were not similar.
The decision was delivered by the fifth chamber of the EU General Court on April 21.
The court ruled while the logos share some similarities, their visual differences were significant.
In September 2017, the Chinese tech company sought to register a computer hardware trademark at the EU Intellectual Property Office (EUIPO) that featured two vertical interlocking semi-circles.
In December 2017, Chanel opposed the application saying that the design was too similar to its registered French logo of two horizontal interlocking semi-circles that feature on the branding of its perfumes, cosmetics, costume jewellery, leather goods and clothing.
In March 2019, EUIPO’s opposition division found against these arguments, holding there was no similarity or likelihood of confusion among consumers.
DIFFERENT STRUCTURE AND ELEMENTS
Chanel appealed the decision but EUIPO’s fourth board of appeal upheld the earlier decision. The board found that from a visual point of view “the marks had a different structure and were composed of different elements”.
The board said: “The mere presence, in each of the marks at issue, of two elements that are connected to each other does not render the marks similar even though they share the basic geometric shape of a circle surrounding those elements.”
The board also found that the mere fact that both logos have the geometric shape of a circle cannot make them conceptually similar.
The French fashion label challenged the ruling at the Luxembourg-based court, holding that the board had erred in its decision.
“The mere presence, in each of the marks at issue, of two elements that are connected to each other does not render the marks similar.”
EUIPO
CHANEL: ‘ROTATED MARKS ARE SIMILAR’
According to Chanel, the board had failed to take into account that when Huawei’s mark is rotated by 90 degrees, the marks are “visually similar to an average degree”. The fashion house also contended that the board was wrong when it found the marks to be conceptually dissimilar, because “there was no need to carry out a conceptual comparison”.
But the court found that the board was correct in its assertion that the visual differences in the two logos were significant.
It found that the circle, present exclusively in Huawei’s mark, surrounds the curves contained in its centre and gives that mark “a specific arrangement and proportions” that are not present in Chanel’s mark.
“Even though the marks at issue share characteristics, namely two black interlaced curves intersecting in an inverted mirror image, a central ellipse resulting from the intersection of the curves, the absence of a circle in the earlier mark and a consequent arrangement rules out any visual similarity,” said the court.
The court concluded that the marks were therefore different and dismissed Chanel’s appeal. The latest decision can also be appealed to the Court of Justice of the European Union.
“The decision seems fair in the sense of the court’s assessment of the criteria to meet the threshold for infringement of a reputed mark, and infringement of an earlier mark due to an established likelihood of confusion on the part of the public,” explained Annabelle Crefovi, founding partner of London fashion law firm, Crefovi.
“Such criteria were not met, as the two marks are visually too different, and produce a very different overall impression.
“There is no likelihood of confusion because these two marks will not be used, and will not apply, to the same members of the public, since Chanel only sells luxury products to an upper-class public, while Huawei targets a middle-class to premium public and customer base.
“Therefore, the public targeted by those two marks is not the same and there will be no likelihood of confusion as a result.”
“As the marks were figurative, the comparison to decide whether the two marks were similar had to be made purely based on their visual similarity.”
Simon Clark, Bristows
TO THE BITTER END
Crevofi added that while Chanel probably knew the likely outcome of this case, the fashion house decided to pursue it “to the bitter end nonetheless, not only for dilatory reasons”, but also to implement its “systematic ‘zero tolerance for infringement’ policy”.
Also commenting on the decision, Simon Clark, partner at Bristows, said: “As the marks were figurative, the comparison to decide whether the two marks were similar had to be made purely based on their visual similarity, because they were not conceptually similar and it was not possible to make a phonetic comparison.
“The court rejected Chanel’s argument that the visual comparison should be made when Huawei’s mark was rotated through 90 degrees, saying that trademarks had to be considered on the basis of the shapes and orientations in which they were applied for when making the comparison. Once that had been decided, it was a reasonable finding that the two marks were not visually similar, and so there was no trademark infringement.”
Robert Reading, director, government and content strategy, IP group at Clarivate, believed the decision was interesting for several reasons.
“First, it highlights the subjectivity of similarity when it comes to devices. In this instance, the court has decided that although the two devices have similarities, they have sufficient important differences—the thickness of the lines, the curves, the orientation—that overall make the two trademarks distinguishable, ie, the differences outweigh the similarities,” he said.
Reading added that the court’s interpretation of the logos’ orientation was the most interesting aspect.
“Unlike words, devices often do not have a ‘natural’ orientation to the human eye. The Chanel mark is understood to represent interlocking ‘Cs’, and the Huawei logo interlocking ‘Us’ or links, but if the orientation changes, this interpretation, and the similarity, can change significantly.”
Image: Shutterstock.com / Creative Lab
The theme of this year’s World IP Day, April 26, was “IP and SMEs: taking your ideas to market”. The IP world has rallied in pledging commitments to better support and enhance IP knowledge among small and medium-sized enterprises (SMEs)—and also to further develop the potential of IP.
WIPR took a look at some of what has been happening on the international and UK stage, and the challenges confronting SMEs.
SMEs ARE ‘UNSUNG HEROES’
The World Intellectual Property Organization (WIPO) introduced the event—held on the date which the WIPO Convention came into force in 1970—to raise awareness about the role IP plays in encouraging innovation and in supporting economic, social and cultural development.
In a video address to mark the day, WIPO director general Daren Tang described SMEs as an “engine for growth” in a post-pandemic world.
According to Tang, SMEs account for 90% of all companies worldwide and 70% of global employment. But he highlighted the lack of IP awareness within this vital sector of the world economy.
“SMEs are the engines, the unsung heroes of our economy. And yet for many of them, there is still a lack of knowledge about how IP can help them translate their ideas into products, and how IP can be a powerful tool for them to not just survive, but to also compete and grow,” he said.
“SMEs face different challenges in different parts of the world, and how we help them will need to be customised to the needs of your part of the world. It will be a powerful message for us to send the signal that together we will be supporting them,” said Tang.
Tang, who took office as WIPO’s director general in October 2020, has made supporting smaller businesses a priority. In one of his first actions as director general, he established the “IP and innovation ecosystems sector”, with a remit to support SMEs, entrepreneurs and researchers in commercialising IP and using it for business growth.
“Whatever help we can render to our SMEs, will be help that we render to the bedrock of your economy, and the backbone of the global economy. Ultimately, it will help our world to ‘build back better’, after the COVID-19 pandemic,” he said.
WIPO is also coordinating a global campaign to highlight the importance of intangible assets to SMEs and the value of IP in supporting SMEs to grow.
The organisation has published a series of case studies from around the world telling stories of SMEs that are using IP rights to turn ideas into business opportunities.
“Whatever help we can render to our SMEs, will be help that we render to the bedrock of your economy, and the backbone of the global economy.”
Daren Tang, WIPO
UK SMEs ‘FAILING TO PROTECT IP’
According to research by the European Patent Office, companies that own at least one patent, registered design or trademark generate 55% higher revenue per employee than companies that do not own IP rights.
But a study published by law firm Mewburn Ellis and YouGov showed that UK SMEs have been left increasingly exposed by their failure to protect IP.
The survey of 436 SME decision-makers revealed that only 21% have taken steps to fully protect their IP assets and that a further 22% have protected their IP assets only in part. Of the remaining respondents, 10% did not know whether their business was protecting its IP assets, and 21% did not think that they produced any IP assets at all.
Even among the larger companies polled, awareness of the importance of IP was low, with only 64% businesses stating that they had protected all or some of their IP.
When presented with a list of different IP assets, 56% of SME businesses confirmed that they had domain names, which was the most-owned IP right. Only 12% had registered patents and 18% had registered trademarks.
Dan Thornton, patent attorney at Mewburn Ellis, said: “IP should be a core asset to any business. This is for both traditional protection of market position reasons, but also for demonstrating innovation and branding.
“That ability to provide evidence can be crucial when seeking investment or acquisition, with many investors being acutely aware of the uses and importance of IP assets. Without careful consideration of IP, SMEs risk losing out to competitors on one hand, and losing out on investment and growth opportunities on the other.”
He added that SMEs were at the vanguard of the economy in a post-COVID-19 world.
“We want to see SMEs succeed. We encourage any business, and in particular an SME, that does not have a considered IP strategy and process to review that position. Make the most of those hard-won IP assets and have them work for the business—both in the marketplace and to drive investment and growth.”
“We encourage any business, and in particular an SME, that does not have a considered IP strategy and process to review that position. ”
Dan Thornton, Mewburn Ellis
FOUR OUT OF FIVE SMEs ARE COUNTERFEITING VICTIMS
The study comes as research by brand protection company Smart Protection shows that four out of every five SMEs are victims of counterfeiting on the internet.
The report, “Impact of online counterfeits in SMBs 2021”, published on World IP Day, highlights the vulnerable situation of SMEs on the internet, and the need to have an effective and reliable technology that allows them to monitor their products online.
According to Smart Protection, cybercriminals are increasingly focused on SMEs that are usually more vulnerable than large companies. SMEs from the US attract the most attention from cybercriminals. In Europe, the most exposed companies are based in the UK, Italy, and France, closely followed by Spain and Germany.
The company analysed more than 12,000 companies in Europe and North America that sell products online, of which 5,178 are SMEs with between one and 200 employees.
According to the study, 80% of SMEs that sell their products are adversely affected by counterfeits on the internet.
Javier Perea, CEO of Smart Protection, said: “Counterfeits on the internet are becoming more sophisticated every day. Cybercriminals can quickly select and copy emerging brands that are experiencing notable growth in their digital sales.
“This has a direct impact on the most innovative products in the portfolio of SMEs. This situation can pose a serious threat to their brand reputation and revenue.”
To mark the occasion, the Intellectual Property Office of Singapore (IPOS) has unveiled the Singapore IP Strategy (SIPs) 2030, a ten-year blueprint to “strengthen Singapore’s position as a global intangible assets (IA) and IP hub” as well as maintain Singapore’s position as a top-ranked IP regime.
SIPS 2030 is spearheaded by an inter-agency committee comprising more than ten government agencies developed in consultation with more than 1,000 stakeholders from the legal, financial, professional services and business community over the past 18 months.
Image: Shutterstock.com / CHIEW
An Australian computer scientist who claims to be the creator of Bitcoin has been allowed to pursue the anonymous operator of bitcoin.org for copyright infringement.
Craig Wright, who claims he wrote the foundational Bitcoin white paper, filed legal action against Cobra, the name used by the operator of the website, at the English High Court in April.
The well-known white paper was published under the name of Satoshi Nakamoto in 2008, while the true identity of Nakamoto has been long debated.
Wright has since gone public with claims to be Nakamoto and the author of the document, which outlined the fundamental technology behind the cryptocurrency.
The purpose of the lawsuit is to obtain the removal of the white paper from bitcoin.org for copyright infringement, which will require Wright to prove he is indeed the author of the document. On April 23, the High Court granted permission for Wright to pursue the case.
“We’ve been threatened to take down the Bitcoin white paper by someone who obviously isn’t the inventor of Bitcoin.”
Cobra
Cobra, the anonymous publisher of the website, has rejected the claims, although it is not yet known whether they will reveal their identity to defend them in court.
“We’ve been threatened to take down the Bitcoin white paper by someone who obviously isn’t the inventor of Bitcoin (if he were, that would make him the 25th richest person in the world, which he obviously isn’t),” Cobra told media outlets including Reuters.
“Seems like he’s trying to abuse the UK courts to make them try to censor the white paper and harass small websites like us providing education content with his behaviour.”
Image: Shutterstock.com / Tupungato
The Andy Warhol Foundation (AWF) wants a US federal court to revisit a decision finding that the late artist’s series of images of the musician Prince infringed a photographer’s copyright.
Warhol’s estate argues that the US Court of Appeals for the Second Circuit’s controversial decision should no longer stand in light of the US Supreme Court’s April ruling in Google v Oracle.
In March, the Second Circuit found that Warhol’s “Prince Series”, containing modified images of the musician, infringed the copyright for the photograph on which it was based.
AWF had argued that the work was fair use since Warhol had transformed the artist from a “vulnerable human being” in Lynn Goldsmith’s original 1981 photograph into the “iconic, larger-than-life” figure depicted in the “Prince Series”.
But the Second Circuit said judges could not base legal decisions on subjective judgments about art, with Justice Gerard Lynch writing: “Whether a work is transformative cannot turn merely on the stated or perceived intent of the artist or the meaning or impression that a critic—or for that matter, a judge—draws from the work.
“The district judge should not assume the role of art critic and seek to ascertain the intent behind or meaning of the works at issue. That is because judges are typically unsuited to make aesthetic judgments and because such perceptions are inherently subjective,” Lynch added.
AWF is now seeking an en banc rehearing of the case by the full panel of Second Circuit judges, citing the Supreme Court’s April 2021 decision in Google v Oracle, which expanded the scope of works which can be protected under fair use.
“The district judge should not assume the role of art critic and seek to ascertain the intent behind or meaning of the works at issue.”
Justice Gerard Lynch
FAIR USE
According to AWF, whether a work is transformative hinges on whether a work “adds something new”, rather than “whether it sufficiently stamps out traces of its source material”.
“If there were any doubt, the Supreme Court made this distinction unmistakably clear in its Google decision, issued shortly after the panel’s opinion here. In Google, the defendant ‘copied’ the plaintiff’s software code ‘precisely,’ and did so for ‘the same reason’ that the plaintiff wrote it,” argued AWF in its en banc petition.
“Even though the defendant used the pre-existing material verbatim in its follow-on work, and even though both works were of the exact same type, the follow-on work served a socially constructive, distinct purpose—the development of ‘a highly creative and innovative’, alternative to the original,” AWF added.
If Google’s use of Oracle’s code was fair use on this basis, so too should be Warhol’s “Prince Series”, AWF told the court.
AWF also argues that the Second Circuit decision conflicts with other circuit’s position on fair use, setting up a potential Supreme Court appeal should the panel refuse to revisit the case or stand by the original judgment.
Image: Shutterstock.com / Kraft74
