Results tagged “Trademark Law”

By Professor Jeffery Atik

Apple's lawyers woke up last month to discover that its China-based iPad trademark litigation with Proview had spilled over to California's courts. On February 17, Proview sued Apple in state court in Santa Clara county, asserting that Apple had defrauded Proview of its IPAD trademarks registered in Europe and in key Asian markets. The California iPad litigation is not a trademark infringement case (Apple's U.S. rights to the iPad mark are not challenged) -- rather Proview disputes Apple's ownerships of the various foreign IPAD marks registered by Proview. Proview urges that its assignment of these marks to Apple be rescinded, due to what it considers to be Apple's fraud. With that said, the California litigation forms part of the larger conflict between the two firms -- which has occupied courts in Hong Kong and Shenzen, China -- and so reflects Proview's grand strategy to cloud Apple's claims to the iPad marks, either by resort to law or by subjecting Apple to public embarrassment. And here lies a tale of Apple's over-cleverness, in approaching Proview in the guise of IP Application Development Limited, a stealth UK company whose name's initials conveniently spell out "IPAD."

The iPad has developed into one of Apple's most important products, now accounting for 26 percent of Apple's gargantuan sales and defining a new category of computing device. The iPad trademark is thus one of Apple's most valuable assets. And so it seems difficult to recall that leading up to Steve Jobs's January 2010 introduction of the device, there was much fascination -- and much mystery -- as to what it would be called. When Steve asked his fans to welcome a "truly magical and revolutionary product," few could conceive how commonplace the term iPad would shortly become in our everyday vocabularies.

By Professor Jeffery Atik

On January 31, in yet another Transatlantic beer conflict, Europe's General Court upheld the determination of the European Trademark Office (OHIM) to deny the trademark registration of "Victoria de Mexico", a long-established beer brand from Mexico. Case T-205/10. Grupo Modelo, the owner of Victoria de Mexico, launched the Victoria de Mexico brand in the United States in 2010 and hoped to replicate this success in Europe. It shall not be. The European trademark application for "Victoria de Mexico" was rejected, due to the successful opposition of a rival Spanish beer, known as "Victoria". The Spanish Victoria has been marketed since 1928, and has held trademark registrations in Spain and Europe since 1994 and 2002 respectively.

Article 8(1)(b) of the European Trademark Regulation states that a trademark shall not be registered in the event of an opposition by a prior trademark proprietor where "because of its identity with or similarity to the earlier trademark and the identity or similarity of the goods or services covered by the trademarks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trademark is protected . . ."

The General Court upheld the Trademark Office's finding that the proposed "Victoria de Mexico" mark would cause a likelihood of confusion, including a likelihood of association, with the existing "Victoria" brand.

The General Court noted that the two marks -- "Victoria de Mexico" and "Victoria" -- would apply to the same product: beer. Given the identical product space, the likelihood of confusion is considerably heightened. In examining the two marks for similarities, the General Court, following European precedent, divided its analysis into three parts: visual, phonetic and conceptual. Further, the Court explicitly considered the perception of the marks by two idealized European beer consumers: one who understands Spanish (or another Romance language or even -- perhaps -- English) and one who does not. The challenge of protecting traditional trademarks, rooted in particular national languages, which now function across the multilingual European market is deftly explored.