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News article16 December 2021European Innovation Council and SMEs Executive Agency

ABBA, “And Just Like That” and “Napapijri Geographic”

News

ABBA sues tribute band ABBA MANIA

The music group ABBA has filed a lawsuit in the U.S. against a tribute band called ABBA MANIA. The Swedish group claims that ABBA MANIA is taking advantage of the evocation of their name, alleging “parasitic and bad-faith conduct”, since they use terms such as “original” or “official” in their marketing materials, social media or website pages. 

The original ABBA sued the British band for trade mark infringement, alleging that they should exclude the term “ABBA” from their name, and use it only to describe their music. 

In addition to this, ABBA claims that consumers have the impression that there is some kind of association, affiliation or sponsorship between both groups. These conducts are known in the UK and the U.S. law as “passing-off” and “product endorsement” as it seems that the real band is endorsing them. 

 

Peloton and “And Just Like That”

The long-awaited revival of “Sex and the City” was released last week, for the delight of fans. 

However, the first instalment was already marked by controversy, since the “Mr. Big” character suddenly died after exercising on a stationary bike, on which was clearly portrayed the brand “Peloton”. 

This seemed at first like product-placement, meaning the act of featuring products or brands into a film or series (which is in fact a form of advertising). 

However, in this occasion, the prominent involvement of the brand in this particular storyline tarnished the company’s reputation and generated a sudden drop of 11% in the company’s stock price.

Now the debate is focused on whether the Peloton company was previously informed of this placement, or if they weren’t aware. 

It is still unknown whether there was a valid product placement agreement in place between both companies. Usually, a licence agreement would have to be signed to allow the prominent use (beyond the uses allowed by the US exception of “nominative fair use”, which does not apply here) of these products and the display of the related trade marks in the show. 

At the moment, no lawsuit has been initiated against the revival’s producer HBO. Even though, in a response to mitigate this detrimental decline, Peloton launched an advertisement in which the “Mr. Big” actor is promoting exercise in a Peloton machine, with one of Peloton’s instructors, while Ryan Reynolds’ voice reminds us of the benefits of cycling for health. 

 

National Geographic vs Napapijri Geographic

In 2010, the company National Geographic Society filed an application for registration of the EUTM “National Geographic”, a word sign for goods in class 25 of the Nice Agreement, concretely: ‘Clothing, footwear, headgear’.

After 7 years, in 2017, the company VF International Sagl, owner of Napapijri brand, filed an application for a declaration of invalidity of the contested EUTM, alleging the provision of article 60.1.c) of the Regulation 2017/1001 (EUTMR), in connection to article 8.4 – relative ground for opposition for independent non-registered signs. 

Actually, the application for declaration of invalidity was based on an earlier non-registered sign, “Geographic”, which was a part of the composite sign “Napapijri Geographic”. The company claimed that the above-mentioned sign was being used in Italy for bags and clothing. 

Both the Cancellation Division of the EUIPO and, at a later stage, the Boards of Appeal, respectively dismissed the cancellation request and the appeal. They considered that VF International Sagl did not prove that their non-registered sign was used in the course of commerce, under the provisions of article 8.4 EUTMR.  

As a consequence, VF International Sagl lodged an appeal at the General Court (GC), claiming that the EUIPO didn’t assess the evidence correctly, nor the relevant public’s perception and finally, claiming the incorrect application of case-law. 

However, the Court decided to dismiss the action, as VF International Sagl could not prove the independent use of the non-registered element “Geographic” in the course of trade, but always together with the mark “Napapijri” and in a subordinate position. Since “Napapijri” constitutes the dominant and distinctive element of the composite sign, the average consumer would neither appreciate the non-registered sign “Geographic” as an independent element or mark, nor associate it to “Napapijri”. Therefore, seeking invalidity on the basis of this non-registered sign could not succeed. 

Details

Publication date
16 December 2021
Author
European Innovation Council and SMEs Executive Agency