Marks with a reputation, and a new copyright case involving Kanye West

Conguitos – a reminder that a mark’s reputation can be limited

On 7 June, the General Court dismissed the appeal lodged by Chocolates Lacasa against an entrepreneur from Alicante who had registered the mark “Conguitos” for drugstore products. The General Court upheld the decision of the EUIPO refusing exclusive use of the term “Conguitos” for the famous chocolate-coated peanuts. The well-known Spanish chocolate company Chocolates Lacasa already lost in 2020 in an analogous case against a children’s shoe company.

By an application filed on 9 January 2012, Mariano Esquitino (Alicante) sought to register the figurative mark “Conguitos” for goods and services in Class 3 (cosmetics, cleaning substances), 14 (jewellery) and 18 (leather goods) of the Nice Classification. Chocolates Lacasa filed an opposition against the EU trade mark application evoking Article 8(5) of the EUTMR protecting marks “with a reputation” against filings of identical or similar marks by third parties where the new mark takes unfair advantage of, or can be detrimental to the reputation of the earlier mark. They claimed that the applicant was taking unfair advantage of the reputation of the earlier trade mark registered for goods in Class 30 (confectionery and chocolates, in particular, chocolate-coated peanuts). The Opposition Division rejected the opposition in its entirety. On 31 March 2021, Chocolates Lacasa appealed this decision within the EUIPO.

The Fifth Board of Appeal of the EUIPO also dismissed the appeal. It stated while the previous mark did have a reputation, it was limited to chocolate-coated peanuts. Therefore, it was not an exceptional renown that would lead the relevant public to establish a mental link between the conflicting marks for such different products.

On 7 June 2022, Chocolates Lacasa (“the appellant”) lodged an appeal before the General Court seeking the annulment of this decision and a declaration of invalidity of the contested mark for classes 3, 14 and 18, evoking Article 8(5) of the EUTMR.

In particular, the appellant submitted that the Board of Appeal failed to consider the “degree of similarity, very close to identity” between the signs and the distinctive character of the earlier mark. Moreover, it argued that the points of sale of the two products coincided and that the contested mark had taken unfair advantage of the reputation or distinctive character of the earlier mark.

The General Court argued that the Board of Appeal was right to find that the goods in question were dissimilar. Indeed, by their nature, purpose, method of use and distribution channels, chocolate-coated peanuts differ from the goods in Classes 3, 14 and 18 of the contested mark and are neither complementary nor in competition with each other. Furthermore, it stated that the Board of Appeal did consider the degree of similarity of the signs, but it was highly unlikely that the public would establish a mental link between the conflicting marks and attribute the same origin to them as the goods are so dissimilar, even though they may be sold in the same shops.

Regarding the reputation of the previous mark, the General Court considered that the appellant did not show that its mark enjoyed a reputation that could be extended to the public of the contested mark, nor that the positive qualities in respect of chocolate-coated peanuts could be transferred to goods of the contested mark, such as cleaning preparations in Class 3 or jewellery in Class 4.

Finally, the Court recalled that, according to the case-law, in order to benefit from the protection provided for in Article 8(5) of EUTMR, the proprietor of the earlier mark must prove that the use of the mark applied for would take unfair advantage of it and would be detrimental to them. The existence of an unfair advantage gained from the reputation of an earlier mark results from the fact that a third party uses a mark similar to the earlier mark and by such use seeks to position itself in the space occupied by the earlier mark in order to benefit from its power of attraction, reputation and prestige.

The General Court concluded that, in the absence of a link between the marks at issue, the use of the mark applied for cannot take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. It therefore dismissed the appeal in its entirety.

Kanye West sued for Copyright Infringement (again)

The photographer Michaela Efford has brought a copyright infringement lawsuit against Kanye West for using her photography without her consent. West has once again embroiled in a copyright controversy just a few months after being accused of plagiarism in one of his songs (we commented on it here).

On 4 October 2022, Kanye West posted a photo of the Vogue editor Gabriella Karefa-Johnson that was captured by Michaela Efford during Paris Fashion Week in September 2022. The photographer claimed that she took the photo “with the intention of it being used commercially and for the purpose of display and/or public distribution”.

The photo chosen by West was no coincidence, having chosen it to mock Karefa-Johnson’s clothing, as an act of revenge against the criticism he received from the fashion editor for the collection that Kanye West presented in Paris, which was accompanied by the caption "White Lives Matter". Karefa-Johnson reproached the phrase as racist, and the criticism did not sit well with the rapper, thus, he posted photos of the Vogue editor to mock her outfits.

What Kanye didn't expect was that the photographs he uploaded to his social network without the photographer's permission were protected by copyright: the photograph subject of this lawsuit had already been registered with the US Copyright Office by Efford (which is a requirement for the launch of copyright infringement actions in the US).

Street-style photographs, as well as paparazzi photos, are often controversial because they generally lack the creativity necessary to amount to a copyrighted work due to the lack of creative input from the photographer. However, the photographer argues that "in creating the photograph, she selected the subject matter, timing, lighting, perspective, depth, lens and camera equipment used to capture the image". Furthermore, she has claimed that West's unauthorised usage of her photo has harmed her ability to market and profit from her work (i.e. she has lost her ability to sell them or otherwise commercialise them), and she is now pursuing unspecific damages.

It is not the first time that West has been sued for copyright infringement. In this new lawsuit, Michaela Efford seeks damages and restitution of all of Kanye West's profits attributable to the infringements, as well as an injunction prohibiting the rapper from any future infringing use of any of her works.