Alicante set for West Coast battle over AppStore

It's not the logo that causes
the problem -- it's the word

So preoccupied has this Kat been with the intense trade mark activity on the US West Coast that he has neglected to discuss a West Coast battle that has been taking place on his own cosy home patch, the United States of Europe. Techflash reported last week ("Microsoft challenging “Apple App Store” trademark in Europe" by Greg Lamm) that Redmond-based Microsoft has joined ranks with, HTC, Nokia and Sony Ericsson in filing for a declaration of invalidity of Apple's AppStore Community trade mark (from a quick glance at the UK IPO's website this Kat notes four CTM filings in Apple's name, two of which have proceeded to grant -- one being based on a prior Trinidad and Tobago filing). Anyway, the article continues:

"Microsoft has already challenged the Apple App trademark in the U.S., asking the U.S. Patent and Trademark Office to refuse the iPhone maker’s registration request on the basis that it’s a generic name, not something to which Apple can lay exclusive claim.

Apple has equated the right to claim “App Store” as similar to Microsoft’s own defense of one of Microsoft’s most valuable trademarks -- Windows -- which Apple has said also is a generic name. ...

Microsoft and the other companies want to invalidate Apple’s trademark registration, “claiming the trademarks should not have been granted because they lack distinctiveness,”according to a Microsoft spokesman. Here is a statement from Microsoft:

'Microsoft and other leading technology companies are seeking to invalidate Apple’s trademark registration for APP STORE and APPSTORE because we believe that they should not have been granted because they both lack distinctiveness. The undisputed facts [Hold on, says Merpel -- this is European intellectual property law. The fact that something's a fact, even if it's indisputable, doesn't make it a fact unless the Court of Justice of the European Union says it is -- and that's a fact ] establish that ‘app store’ means exactly what it says, a store offering apps, and is generic for the services that the registrations cover'".

The IPKat recalls the expectation, when the Community trade mark system was launched, that there would be joined, if not joint, oppositions to CTM applications (he doesn't think anyone mentioned joint applications for declarations of invalidity, presumably because it was understood that the Office for Harmonisation in the Internal Market (OHIM) would only ever grant valid CTMs.  He is however hugely impressed that this application has been filed by Microsoft, HTC, Nokia and Sony Ericsson -- which, if not evidence in itself that the mark is generic or descriptive, is evidence that an important segment of the industry clearly does hold that view.   Merpel adds, it's also a smart way for a few businesses to cut their legal overheads by doing a spot of sharing ...

Deere, Deere: red faces in battle for yellow and green

There was a colourful ruling of the Court of First Instance of the European Communities (CFI) today in Case T‑137/08, BCS SpA v Office for Harmonisation in the Internal Market, Deere & Company, an appeal against the decision of the Second Board of Appeal not to invalidate Deere's Community trade mark.

In 1996 Deere applied to register the colours depicted on the right for 'attached, pushed or self-propelled agricultural and forestry machines’ in Class 7 and 'self-propelled agricultural and forestry machines, in particular farm tractors, small tractors, land tractors and trailers’ in Class 12. The colours were designated using the Munsell system as 9.47 GY3.57/7.45 (green) and 5.06 Y7.63/10.66 (yellow). Their arrangement was described as being ‘green for the vehicle body and yellow for the wheels’, as shown by the picture attached to the application and reproduced on the left. The marks were registered in 2001.

Three years later BCS SpA sought a declaration of invalidity in respect of all the goods protected by the registration of the mark, maintaining that it was devoid of distinctive character when the application was filed and that there had been insufficient proof of distinctive character acquired through use. A second ground of attack that the mark had been registered despite the existence of an Italian non-registered trade mark, also consisting of a combination of the colours green and yellow. Said BCS, the use of that unregistered mark before 1996 in relation to ‘agricultural machines, in particular farm tractors, small tractors, land tractors and trailers’ in ten EU member states gave it the right to prohibit the use of a subsequent trade mark consisting of those colours.

The Cancellation Division was unimpressed with this assault on the mark's validity and dismissed the application for the declaration. In its view BCS had not shifted the burden of undermining the evidence submitted by Deere of distinctiveness acquired through use. Further, even though BCS had shown that it had used the colours yellow and green on various types of agricultural machinery before the filing date of the disputed mark, it had not proven that, before that date, that sign was perceived as an indication of commercial origin by the relevant public in the territories concerned. The Board of Appeal dismissed BCS's appeal, so the company tried its luck with the CFI -- but to no avail, the court dismissing BCS's claims and ordering it to pay costs.

The CFI carefully reviewed the decision of the Board of Appeal and its approach to the evidence before it, concluding that BCS's case was plainly deficient. Among other things, the CFI reminded the litigants that the burden on Deere of establishing distinctive character was not as heavy as BCS would have liked:

"39 ... lthough it must be proved that the disputed mark has acquired distinctive character throughout the Community (see, to that effect, Case C-25/05 P Storck v OHIM [2006] ECR I-5719, paragraph 83), the same types of evidence do not have to be provided in respect of each Member State".

Thus surveys in some States can be supplemented by documentary evidence in others. The CFI also said this about BCS's own attempt to establish that it had a sufficient reputation in the colours to prevent Deere's use of its mark:

"73 First, it is common ground between the parties that the applicant ceased, at least from 1973 to 1982, to use the combination of the colours green and yellow on its goods in Italy. Although it would have been possible for the applicant to acquire a non-registered right in its sign through the use from 1983 to 1996 it did not do so. It is also apparent from the findings ... that it did not use the combination of the colours green and yellow in a consistent and uniform manner. On the contrary, it used a number of shades of green and yellow as well as a combination of the colours green and white.

74 It follows that the suspension of use of the combination of the colours green and yellow as a mark and the varying use of those colours were liable to prevent the public from systematically associating the applicant with a specific combination of colours.

75 Secondly, the Board of Appeal was fully entitled to regard the evidential value of declarations made by former employees of the applicant as questionable. ... those declarations were not corroborated by other evidence in the file and they were even partially disproved.

76 Thirdly, the Board of Appeal cannot be criticised for having found that the market survey submitted by the applicant was not persuasive. ... the Board of Appeal was fully entitled to point out ... that the participants in that survey, contrary to that carried out by [Deere], had not been asked for their reasons for giving a particular response and had not been shown a different image in a different colour in order to ensure that they did not recognise the image because of criteria other than the colour. Those facts are not disputed by the applicant. Consequently, it cannot be ascertained whether, at the end of the applicant’s survey, the participants recognised the applicant’s goods solely as a result of their colours and not as a result of their shape or other factors.

77 It must also be stated that the Board of Appeal was fully entitled to find that the evidential value of the applicant’s survey was noticeably lower than that of the survey submitted by [Deere], since the respondents in the applicant’s survey had been asked to recreate from memory their perception of the marks 10 years previously".

The IPKat thinks this decision is clearly correct, but also feels some sympathy with BCS who, having previously used green and yellow livery themselves, must have felt a little miffed at Deere coming along -- as they were entitled to do -- and gaining the upper hand through a valid trade mark registration. However, if your competitor gets the green and yellow, isn't it better to spend money on teaching the public to recognise a new set of colours than to spend five years in pointless and fruitless litigation? Merpel wonders about the para.77 point: could it not be argued that, if the respondents still retained a perception of marks for a whole decade, those marks must have made a really powerful impression upon them?

Yellow and Green here
Green and Black here
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