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Trade marks: registry review – April 2015

Print publication

10/04/2015

DATABAY [1]

The Opposition Division has upheld eBay’s opposition to an application for registration of the mark dAtAbAy based on its earlier EBAY registration.

The Opposition Division held that the EBAY mark enjoyed a reputation for the purposes of Article 8(5) of the Community Trade Mark Regulation and that registration of the dAtAbAy mark would take unfair advantage of the EBAY mark so that the services covered by the dAtAbAy mark would be perceived by the relevant public as promising the quality, reliability and, in a broader sense, the worldwide availability of eBay’s services. The Opposition Division did not need to consider eBay’s alternative ground for opposition under Article 8(1).

BELLA VITA [2]

The Opposition Division has upheld an opposition to registration of the mark BELLA VITA based on the prior registration BELVITA. The contested goods were “wine” while the opponent’s mark was registered in respect of “alcoholic beverages (except beers)”.

The Opposition Division considered that in view of their visual, aural and conceptual coincidences, the two signs were similar and that there were no elements which could be clearly considered more dominant than other elements. The earlier sign had an average degree of distinctiveness and the goods were found to be identical. Taking all this into account the Opposition Division concluded that there was a likelihood of confusion on the part of the public.

NISSAN JIDOSHA [3]

The EU General Court has dismissed an appeal against a ruling of the OHIM Board of Appeal removing a Community trade mark registration on the basis that the Community Trade Mark Regulation does not permit renewal requests to be staggered over time in respect of different classes of goods or services.

The appellant had requested renewal in relation to two classes before the deadline set out in Article 47(3) of the Regulation and then requested renewal in relation to the third class after the deadline but during the grace period. The Court held that it was clear from the wording of Article 47 that the possibility of submitting a renewal request after the expiry of the initial period was conditional on no renewal request having been submitted during that period.

McSALAD [4]

The Opposition Division has refused an opposition challenge to registration of the word mark McSALAD based on the prior Community trade mark registration of the figurative mark McSALAD. The prior registration was in respect of “sandwiches” while the applicant (McDonald’s) was seeking registration in respect of “potato, antipasto, garden, Caesar, fruit and vegetable salads” and “pasta salads”. The Opposition Division held that the categories of goods of the competing marks were clearly dissimilar and therefore the opposition must be rejected.

SOLAFIELDS

Walker Morris has successfully acted for the applicant for invalidity in respect of the registered mark SOLAFIELDS. We have written about this separately here.

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[1] OHIM, Opposition No B 2 340 704, eBay Inc v Omnicom International Holdings Inc
[2] OHIM, Opposition No B 2 353 434, Eckes-Granini Deutschland GmBH v BV Trading LDA
[3] Nissan Jidosha KK v OHIM, Case T 572/12
[4] OHIM, Opposition No B 2 322 538, Artesania de la Alimentacion SLU v McDonald’s International Property Company Ltd