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2017 Roundup: An Eventful Year in Trademarks

Category: Trademark Information

No business, big or small, is safe from identity theft. Registering a trademark gives ownership of a brand so action can be taken to protect the owner’s rights and prevent a competitor from trading on the good reputation that owner has in a  brand. It is an effective marketing strategy that upholds a brand’s name and sets it apart – legally – from its existing and potential competitors.

This year, we’ve covered some of the biggest news in trademark laws, legal cases and rulings. To welcome the year ahead, here is a roundup of the trademark industry’s events in 2017 just in case you missed an earlier newsletter:

February 2017

Harley-Davidson Sues Urban Outfitters for Trademark Infringement for the Second Time

Harley-Davidson, one of the most successful motor companies in the US, took matters to court against Urban Outfitters after the clothing brand released a line of ‘FPV HARLEY BODYSUITS’ in February.

This was not the first time Harley-Davidson filed charges against the clothing company. In 2014, Urban Outfitters sold shredded, cut-up and altered versions of Harley-Davidson’s apparel.

A statement from Harley-Davidson concluded that Urban Outfitters manufactured “Infringing Bodysuits” from ‘genuine Harley-Davidson products that [they] have altered and reconstructed into new products’, most of which bear the iconic Harley-Davidson trademarks. Other products in the line, on the other hand, appeared to be carrying the brand’s name without any genuine association to the motor company. This urged Harley-Davidson to accuse Urban Outfitters of ‘falsely [suggesting] that the Infringing Bodysuits are Harley-Davidson products’.

The fight ended in May after Urban Outfitters agreed to stop selling Harley-branded merchandise, genuine or otherwise.

March 2017

Louboutin Loses Case to Trademark its Famous Red Soles in Switzerland

The famous red sole is quintessentially Christian Louboutin. In fact, red soles in high-heeled pumps are trademarked in the United States, Russia, Australia and China. In Switzerland, however, a trademark battle on the red sole ensued earlier this year.

The Federal Supreme Court of Switzerland turned down Louboutin’s demand to trademark the red sole. They denied the appeal because the court ruled ‘an aesthetic element’ unworthy of a trademark.

Alex Brodie, a representative from Gowling WLG Law, said it is very important for brands to ‘frame [their] application for a trademark very carefully to avoid the colour being seen as simply aesthetic’.

April 2017

Trump’s Trademark Triumph

Apart from winning last year’s US Presidential Elections, Donald Trump was also awarded 38 new trademark registrations in China. Trump is both a politician and a real estate mogul, and he now carries over 100 trademarks in China.

Although Senator Ben Cardin claimed the ruling unfair and dubious, China’s foreign ministry spokesperson, Geng Shuang, said that all Trump trademarks were received ‘in accordance with the law and regulation’.

July 2017

IKEA’s Trademark Suit Loss against Aikya Global: What Really Happened?”

IKEA, the world’s largest home retailer, lost to Bengalaru-based consulting company Aikya Global after fighting for the case since 2013. The Swedish retailer filed a lawsuit against Aikya Global for creating a brand name with a heavy phonetic resemblance to their own.

Aikya Global initially accepted the charges and amended their name to Ajira Global. The New Delhi court, however, reversed the injunction and ruled in favour of the Indian consultancy.

August 2017

UK Courts Refuse to Trademark KitKat’s Shape

After a long-running trademark battle in the UK, Nestle KitKat failed to trademark its four-finger shape. Although ‘Have a Break’ and the brand’s packaging design are registered trademarks, UK’s Court of Appeal stated that the shape of a KitKat was not ‘distinctive enough to warrant a trademark’.

Toblerone and Coca-Cola have won trademark battles in the past, receiving approved registrations for their triangle-shaped chocolate pieces and signature contoured bottles, respectively. KitKat, however, has a design that is nearly identical to Kvikk Lunsj, a product owned by Mondelēz. Kvikk Lunsj has been on the market since 1937, providing further reason for the court to reject Nestle’s appeal.

September 2017

Logo Wars: How Under Armour Won against Uncle Martian

Famous American sportswear brand, Under Armour, recently won a legal battle against Tingfei Long Sporting Goods, Inc., a Fujian-based sports shoe manufacturer. The Chinese debuted a collection of athletic apparel and footwear called ‘Uncle Martian’ with a logo that resembled Under Armour’s, their biggest competitor in the country.

In August, the People’s Higher Court of Fujian Province ruled in favour of Under Armour.

October 2017

Why New Balance’s Trademark Infringement Victory in China is a Big Deal

Since 1995, New Balance has been a recognised sport brand in China. Since then, brands like New Barlun, New Bunrer and New Boom have been charged with trademark lawsuits after allegedly copying the slanted ‘N’ logo. The American brand charged them around 10 million Yuan in costs and damages – the biggest lawsuit sum awarded to a foreign company in China.

Chinese companies have dealt with and plead guilty for many trademark cases over the years. New Balance’s victory urged the Chinese government to revisit their laws and strategies regarding intellectual property.

November 2017

Fast Food Giant McDonald’s Wins Trademark Dispute Case with Singapore Rival

McDonald’s filed a lawsuit against their Singapore rival, Future Enterprises, after the latter named their instant coffee product ‘MacCoffee’. The General Court in Luxembourg, the second highest court of the European Union, sided with McDonald’s. The court stated that using the name ‘MacCoffee’ increases the probability that Future Enterprises was riding on the coat tails of McDonald’s.

Secure Your Trademark with Us

If you have questions or concerns regarding trademark laws and application processes in Australia, contact Pinnacle TMS for a complimentary 10 minute consultation which can be booked through our website, www.pinnacletms.com.au.  You can call us on +61 2 9520 4366 or email info@pinnacletms.com.au.

Fast Food Giant McDonald’s Wins Trademark Dispute Case with Singapore Rival

Category: Trademark Information

American fast food chain, McDonald’s, won a trademark dispute case with their Singapore rival, Future Enterprises. The dispute arose over the use of ‘Mac’ and ‘Mc’ as prefixes for branding beverages and food items – in particular, Future Enterprise’s use of ‘MacCoffee’, an instant coffee product under their Food Empire brand.

The Court’s Decision

The ruling came from the General Court in Luxembourg, the European Union’s second highest court. The court ruled in favour of McDonald’s, who was granted exclusivity to the McDonald’s name, as well as 12 other trademarks that included the prefixes of ‘Mc’ and ‘Mac’.

MacCoffee is Food Empire’s flagship product and is a top all-in-one instant coffee brand in Ukraine, Russia and Kazakhstan. The company also distributes its products across Central Asia, China, the Middle East and in the United States.

Food Empire’s executive chairman, Mr Tan Wang Cheow, maintained that their instant beverage brand has a unique packaging design and that the product has to be prepared by the consumer, causing no confusion with the McDonald’s brand, which serves ready-to-consume food and drinks.

The company applied to register “MacCoffee” back in 2008, and was actually granted approval after two years. However, pressure from McDonald’s lawyers caused the trademark to be invalidated, leading to the European Union Intellectual Property Office reversing their decision.

Future Enterprise made the move to challenge the Property Office in an effort to regain the trademark.

Despite the company’s claim, the General Court sided with McDonald’s in 2016. They ruled that MacCoffee and McDonald’s trademarks are too similar conceptually, and upheld the patent office’s decision to reject Future Enterprise’s trademark application.

Trademarks Protect Against Free Riders

As McDonald’s holds the trademarks for food items branded with ‘Mac’ and ‘Mc’, the reputation of their trademarks prevents the registration of other food and beverages using these prefixes.

Judges of the General Court ruled in favour of McDonalds because of the high probability that MacCoffee is merely riding on the coat tails of the fast food giant. The use of ‘Mac’ in the name makes it extremely similar to McDonald’s ‘McCafe’, which is the fast food giant’s coffee and dessert bar brand.

This case shows that a registered trademark is a powerful tool that prevents competitors benefitting from the reputation and prestige of popular brands without paying financial compensation. Companies like McDonald’s have far reaching marketing campaigns to promote and maintain their image, which other companies may seek to benefit from without bearing the same costs for their own marketing efforts.

However if you are a small business, the danger of not protecting your brand, which you have invested time, money and engery into are just as real and can be a major setback in your business.

Trademark Your Brand

A registered trademark prevents the identity theft of a company’s intellectual property and branding, preventing piracy and protecting a brand’s reputation. The McDonald’s case proves how a registered trademark protects a company’s valuable asset and marketing efforts.

A formal trademark registration should be a starting point of any branding effort to ensure the security and protection of a company’s intellectual property.   Why invest in a brand that has issues with use and ownership from the start?!

For questions regarding the trademark application in Australia, contact Pinnacle TMS today for a complementary 10 minute consultation. Email us at info@pinnacletms.com.au or call at +61 2 9520 4366. You can also visit our website at pinnacletms.com.au. to see our range of short videos answering trade mark questions.

New Balance trademark case in China

Why New Balance’s Trademark Infringement Victory in China is a Big Deal

Category: Trademark Information

Since joining the World Trade Organisation in 2001, China has been trying to strengthen its trade mark laws. China has been making its laws stricter to respond to widespread trade mark infringement in China. Chinese companies who violate trademark laws are charged with a maximum statutory amount of $75,000. This value was before China passed a new trademark law in 2014. Currently, there is new legislation that increased the amount to $450,000.

New Balance’s Trademark Infringement Case

New Balance shoes have been sold in the Chinese market since 1995. Continuously, the sales of sports equipment has boomed in the Chinese market. As sales increased, several domestic companies started producing their own sports products that arguably copied foreign companies.

Recently, three domestic companies violated trade mark laws by copying New Balance’s trade mark slanted ‘N’ logo. Specifically, New Boom, New Bunren and New Barlun were charged with $1.5 million, which is almost 10 million Yuan in legal costs and damages. This is the biggest sum ever awarded to a foreign company in China. This court ruling was issued three days after President Trump requested an investigation of theft of intellectual property in China.

Effects of New Balance’s Trademark Infringement 

New Balance’s incredible victory is a good sign for other foreign brands that have complained that the Chinese government has not done much in protecting their brands. According to Carol Whang, a lawyer who represented New Balance, the trademark infringement case conveyed a strong impression to foreign brands that are selling their products in China. Without a lawsuit being filed, the three domestic companies would just continue to produce fake products that violate trade mark laws.

Similar to the case of New Balance, Michael Jordan won a trademark case in 2016 against a Chinese sportswear company for using his name in Mandarin without his consent. With intellectual property laws in China becoming stricter and new strategies being developed to ensure that domestic companies do not violates trade mark law, foreign trade mark owning companies have more confidence that infringement of their brands can besuccessfully successfully challenged in Chinese Courts.

New Intellectual Property Protection Strategies

Paolo Beconcini, the senior global brand protection consultant at Squire Patton Boggs, stated that current legislative reforms have considerably enhanced brand protection in China. Beconcini has worked on Chinese intellectual property cases for 15 years of his legal career. He stated that the changes in brand protection include new punitive damages for repeat infringers, four specialised intellectual property courts and a higher threshold for statutory damages.

What happens now to New Balance in China?

The outcome of New Balance’s case has made the Chinese government revisit their laws and strategies for intellectual property. Daniel McKinnon, New Balance’s senior counsel for intellectual property, stated that New Balance has confidence in their strategies on intellectual-property protection in China.

The company is to become stricter with domestic companies that sell similar sports products in China. With new trade mark laws being strengthened, it is highly possible that other foreign companies that sell their products in China will reinforce their intellectual property rights with the help of the Chinese government.

About Pinnacle TMS

Suzanne Harrington, an Australian trade mark specialist, is the proud owner of Pinnacle TMS. We are a boutique trade mark services company that has over twenty years of experience in brand protection by trade mark registration, both in Australia and overseas. If you need help with trade mark registration and trademark portfolio management, call +61 2 9520 4366 or send them a message on our website contact page.

Logo Wars: How Under Armour Won Against Uncle Martian

Category: Trademark Information

Trademark fights are not new in China. In fact, Apple, New Balance and Sulbing are just a few amongst a number of international brands that have gone to court against Chinese businesses in the past.

Under Armour, a renowned American sportswear brand recently found itself in a year-long legal battle against a company based in Fujian, because of a trademark issue regarding their logo.

Something Borrowed

Tingfei Long Sporting Goods, Inc. is a growing sports shoe manufacturer in southeast China. The company recently debuted a line of athletic apparel and footwear under the name ‘Uncle Martian’ with an accompanying logo to boot. While the name itself may not ring any bells, the logo used to represent the collection had an uncanny resemblance to that of Under Armour’s, their biggest competitor.

Under Armour’s logo has a distinct and creative image of the letter ‘U’ intersecting a mirrored version of the character, which is then stylised to form the letter ‘A’. ‘Uncle Martian’ uses similar imagery, but the two characters do not touch. Those who would compare the two logos would agree on the similarity, specifically the font choice, the colour scheme and the positioning of the characters.

The use of the Laurel Wreath by ‘Uncle Martian’ was also reminiscent of Fred Perry’s logo. Fred Perry is a famous UK brand founded by Fred Perry, a triple Wimbledon champion. Since 1952, the brand has been a favourite amongst tennis players and British youth subcultures alike.

Beyond the Picture

Uncle Martian’s transliterated Chinese name, with a phonetic reading of ‘an-ke-ma-ding’, is also quite similar to the Chinese brand name of Under Armour, which is pronounced ‘an-de-ma’.

Tingfei Long heavily denied all allegations from the American brand. Huang Can Long, its General Manager, stated that the brand only aims to be known for ‘comfort, excellence and innovation’. In an interview with Shoes.net.cn, Huang Can Long claimed that he wanted nothing more than to create a high-profile brand with ‘high standards.’

Inciting Rifts

Under Armour dismissed the statement of its legal opponent. In 2016, Under Armour’s spokesperson Diane Pelkey said that the brand was unamused about the infringement and was willing to pursue ‘all business and legal courses of action.’

Even on social media, people were not pleased with the creative decisions of Tingei Long.

‘How come you can’t even design a logo?’ asked a critic on Weibo, a Chinese social media platform. ‘All you do is plagiarise – don’t you feel it’s disgusting?’

Another Chinese user said: ‘Don’t blame people when they say they look down upon domestic brands.’

The Victory

Early in August 2017, the People’s Higher Court of Fujian Province finally ruled the case in favour of Under Armour. Tingfei Long Sports Goods, Inc. owes 2 million yuan in damages to the American footwear brand and was given an order to permanently halt the use of the logo.

Danny Awdeh, lead counsel for Under Armour, called the ruling ‘a very positive story for trademark owners.’

While there have been many disputes regarding trademark rights, the Under Armour case is a good example of how those fights can, indeed, be won.

Seek the Expertise of Professionals

For more questions about trademark applications and laws, contact Pinnacle TMS at pinnacletms.com.au to schedule a consultation with us. You can also send us an email at info@pinnacletms.com.au or call us on +61 2 9520 4366.

UK Courts Refuse to Trademark KitKat’s Shape

Category: Trademark Information

Nestle has lost yet another round of its long-running battle to trademark the KitKat design in the UK. While the word ‘KitKat’, its packaging and the slogan ‘Have a Break’ have been registered as trademarks in the UK, the shape of the chocolate itself does not.

The confectionery multinational first attempted to trademark the shape of its chocolate in 2010 but was promptly thwarted by Cadbury. Both companies have been in an ongoing dispute over trademarks since Nestle opposed Cadbury’s attempts to trademark the purple colour used in the packaging for Dairy Milk.

To qualify for registration, trademarks have to be distinctive. The Court of Appeal ruled that the design of KitKat was not ‘distinctive enough to warrant a trademark’ and to allow it would not comply with European law.

Trademarking Shapes and Colours

Trademarks are commonly names, logos and sound pertaining to specific goods and services. Trademarking colours and shapes is more complex and in many cases, have been unsuccessful. Such was the fate of companies like Lindt, which lost the bid to trademark its chocolate bunny wrapped in gold foil, and Rubik, which failed to win EU trademark protection for its cube-shaped puzzle. Nestle blocked Cadbury’s efforts to trademark the specific shade of purple for Dairy Milk.

The results, however, weren’t as bad for products like Toblerone, whose triangular shape is presently trademark protected. Coca-Cola also succeeded in claiming exclusive rights to its curvy, contoured glass bottle in 1980.

The question is, where did Nestle fail and why did Toblerone win?

Nestle: What Went Wrong

The UK court motioned that KitKat’s design, marked by rectangular bars with breaking grooves, was not distinctive enough.

The latest ruling stated that the four-finger design had ‘no inherent distinctiveness’. While the public may associate the shape with KitKat, it does not mean that consumers perceive the shape as a ‘badge of origin’ that they can use solely to identify the product and its source.

The consumers may simply regard the shape as a characteristic of the product, which would aid in recognition. The shape may also remind them of the brand name that is already familiar to them.

This type of recognition and association is insufficient to reflect the product’s inherent distinctiveness for trademark purposes. Moreover, the court expressed that if Nestle had a monopoly of the four-finger shape, it would be unfair to other confectionaries, since Nestle had never advertised KitKat for its shape alone.

Another argument raised is the existence of a chocolate bar called Kvikk Lunsj, a Norwegian product that has been present since 1937. It uses the same four-finger design and is nearly identical to KitKat. Kvikk Lunsj is also owned by Modelez, the parent company of Cadbury.

Toblerone: What Went Right

The Toblerone shape is pivotal to the company’s advertising, which emphasises the use of triangular honey from triangular bees. Meanwhile, Coca-Cola’s bottle was so prominent in its ads that people could identify it as a Coke bottle without the label. In both brands, the shape is utilised directly as a selling point – which Nestle has failed to do.

The ruling against KitKat shows that shape marks will be increasingly harder to obtain, as more brand owners push the boundaries to get as much protection as possible. Trademarks can potentially last for as long as the brand is alive, so for many companies, they are a truly significant measure of protection.

Let Us Help

At Pinnacle TMS, we recognise the stress and challenges involved in trademarking a brand, whether it’s a business name or product name or logo.   That’s why we are here to help. Our trademark specialists will take the hassle and headache out of the process and lead you through the maze that trade mark registration can be.

For any enquiries regarding the trademark registration process or our services, call +61 2 9520 4366 or email info@pinnacletms.com.au.   You can also book a consultation via our website for a time to suit you today.