Trademarks are by far the most fun of the IP rights. So let's look at a few recent trademark developments. The first deals with the registration of geographic names and the others with confusing similarity.

ICELAND – it's a country!

The decision of the EUIPO Grand Board of Appeal in the case of Iceland v Iceland has been in the .

The court declared invalid an EU trade mark registration for the name Iceland, a registration that belongs to a food company traded in the UK for some 50 years, Iceland Foods Limited.

The court accepted that the registration of a country name as a trade mark is theoretically possible, but, it said, real caution is required. It made a number of points:

  • names of countries will be judged differently to other geographical indications such as names of lakes, regions and mountains;
  • the name of an EU country will almost certainly be well known by EU consumers, who will not see it as an indicator of manufacturing provenance. Names of non-EU countries may sometimes be less problematic;
  • the evidence of acquired distinctiveness that had been submitted was insufficient because it didn't show any use of the name in a number of leading EU countries.
  • Iceland has extremely close ties with one EU country, Denmark, and it is a member of the European Economic Area.
  • Iceland has significant industrial capacity, it has a high standing as a "nation brand", and is a big tourist destination; and
  • although the brand name Iceland is known in Ireland, it has very little traction in the rest of the EU.

A pretty resounding NO!

ADIDAS - three stripes and you're out, four and you're in the game

In the USA Adidas recently lost a trademark infringement action against the luxury brand Thom Browne.

Adidas claimed that Thom Browne had infringed the famous three-stripe trade mark for clothing through the use of a four-stripe device.Adidas sought damages of USD7.8 million. But the court said that there was no likelihood of confusion. Argumentsby Thom Browne include the fact that the companies operate in different marketswith "strikingly different price points" (which seems to be a way of saying Adidas is cheap). Thom Browne also argued that stripes are common for clothing.

The case attracted considerable attention. Not least because Thom Browne (the man behind the company) appeared at the court hearing in a very fetching suit with short trousers and a sock featuring four stripes – the photos went viral! He is quoted as saying in court, "The notion of Thom Browne wanting to trade on the reputation of Adidas offends him. He is not Adidas."

GUNS N' ROSES –only in America!

If you're over a certain age you'll know that there's a rock band called Guns N' Roses. The band recently sued a business that has the anodyne name Jersey Village Florist, yet operates under the somewhat raunchier name, Texas Guns and Roses. And yes, the business does sell these rather disparate products!

The band claims that the name falsely suggest a connection and there is a likelihood of confusion. It also alleges that there is dilution - a misappropriation of "goodwill, prestige and fame." It says that it does not want to be associated with a firearms retailer, and it wants damages.

JUST DON'T DO IT

A company called Tacvue, Inc filed an application to register the mark "Just Dao It" for computer-related services, including the creation of an online community for registered users.

Unsurprisingly a certain clothing and footwear brand is unimpressed, claiming that the application will cause it harm (confusion and dilution) if it goes through to registration. Nike claims to have used the slogan Just Do It in connection with clothing since 1989, and it says that this use has been extended to the digital world – there's talk of downloadable mobile applications offering social networking, community building and interactive feedback, as well as trademark registrations that extend to these services. Nike argues that "Just Do It" is a famous mark and that it has consistently blocked take-offs of the mark.

Just Dao It – what were they thinking?

FINALLY BRAND OWNERS, LET'S THINK ENVIRONMENT!

An unusual issue is beginning to emerge.

The EU authorities are calling for less wasteful packaging. This may sound perfectly reasonable to most people, but not to some brands, who fear that restrictions may lead to "standardisation" of packaging, which could limit their ability to differentiate themselves from the competition. These brand owners are in fields such as champagne, spirits and perfumery. They argue that over-the-top packaging is part of the product's appeal, and therefore necessary.

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