“Fresh” case – Thinking Out Loud

“FRESH” CASE 

The applicant sought to register as a European Union Trade Mark (EUTM), before the EUIPO, the figurative sign with word elements “Fresh”. The registration concerned goods and services in the following classes of the Nice Classification: 

-       Class 29 (Dairy products and dairy substitutes; Meat and meat products; Soups and stocks, meat extracts; Processed fruits, fungi, vegetables, nuts and pulses; Edible oils and fats);

-       Class 30 (Sugars, natural sweeteners, sweet coatings and fillings, bee products; Coffee, teas and cocoa and substitutes therefor; Ice, ice creams, frozen yogurts and sorbets; Salts, seasonings, flavourings and condiments; Processed grains, starches, and goods made thereof, baking preparations and yeasts); 

-       Class 31 (Agricultural crops and horticulture products);

-       Class 32 (Soft drinks; Beer and brewery products);

-       Class 35 (Business assistance, management and administrative services; Advertising, marketing and promotional services; Retail services relating to alcoholic beverages, etc.);

-       Class 39 (Packaging and storage of goods). 

Both the examination division and at a later stage the Boards of Appeal (BoA) of the EUIPO, refused the EUTM application pursuant articles 7.1.b) and 7.1.c) of the European Union Trade Mark Regulation (EUTMR), as they considered that the trade mark sought was  devoid of any distinctive character and descriptive in respect of the goods and services designated. 

The applicant lodged an appeal against this decision before the General Court (GC). 

The Court pointed out that, pursuant article 7.1.c) EUTMR, registration must not be granted to a sign that designates exclusively the kind, quality, quantity, intended purpose, value, geographical origin. In that regard, for the assessment of the descriptive character of a sign, the relevant public must perceive immediately that there is a link between the goods at stake and the description or characteristics of those. 

As regards the relevant public, the Court held that since the word “Fresh” would be perceived by the English-speaking consumers in the EU will as a description of the characteristics of the goods and services designated in the application, and not as the commercial source. 

Despite the stylisation of the letters of the word “Fresh” and the figurative elements included (two green leaves), the Court found that the figurative elements were not sufficient to modify the descriptive character of the word element in relation to the goods and services. 

For this reason, the Court upheld BoA’s decision and confirmed the descriptive character of the sought trade mark. Therefore, the appeal was dismissed and the applicant couldn’t succeed in registering the contested sign. 

THINKING OUT LOUD

Ed Sheeran is currently facing another copyright infringement claim. Back in April, the High Court of England and Wales dismissed the copyright infringement claim over the hit “Shape of you”, as the Court could not determine the existence of copyright infringement, despite the similarities between both songs. 

However, in this occasion the songwriter has been sued in the U.S. for allegedly infringing Marvin Gaye’s 1973 song “Let’s Get It On”.

The lawsuit was filed in 2018 by the company that owned part of the rights to the song, and demanded compensation of $100 million. The claimant argued that Sheeran’s song “Thinking Out Loud” bore a lot of similarities with “Let’s Get It On”, “including but not limited to the melody, rhythms, harmonies, drums, bass line, backing chorus, tempo, syncopation and looping”. 

The judge in charge of the case considered that due to the difference of opinion between the musical experts, the trial should go ahead, to settle possible copyright infringement. Therefore, a jury will have to decide if Ed Sheeran infringed “Let’s Get It On” when he composed his “Thinking Out Loud” hit. 

We will inform you on the outcome!