Samsung wins “S10” trade mark lawsuit – The General Court ruling about Gourmet

Samsung wins “S10” trade mark lawsuit

Samsung Electronics Co Ltd won a federal jury trial last week, successfully arguing that its Galaxy S10 phones do not infringe the trade mark rights of a talent-management agency that also uses the same “S10” name.

S10 Entertainment & Media LLC, a company which manages artists, said that they started using the name in 2017. On the other hand, Samsung started selling its smartphone in 2019.

The claims of S10 consisted in the fact that Samsung advertisements would confuse customers, bringing the idea that both brands were affiliated. To support this idea, S10 Entertainment argued that they started receiving a lot of messages from people trying to buy the new Samsung Galaxy S10.

Samsung argued that the use of “S10” would not cause confusion and, also, that its use of the sign “S10” was based on its “Galaxy S” family of marks, thus having priority.

The plaintiff said that “as a result of confusion between Samsung’s S10 phone line and S10 Entertainment’s mark, the value and goodwill of S10 Entertainment’s Instagram and social media footprint has been severely diminished”.

In this case, the jury found that S10 Entertainment had not shown that Samsung was likely to cause confusion between its famous phone name and the agency, thus rejected the claims of trade mark infringement.

The General Court makes a ruling about the modified use of GOURMET

Transgourmet Ibérica v. EUIPO and the third party to the proceedings before the Board of Appeal Aldi GmbH & Co. KG

An interesting case was decided upon this month by the General Court about the proof of use, which implies that the owner of a registered trademark may be required to demonstrate the use of the earlier mark for the relevant goods and services during a prior 5 years period.

Transgourmet Ibérica, SAU, (the applicant) filed an application for a declaration of invalidity of Aldi’s EU trade mark 8143653 for the figurative sign “GOURMET”. This application was based on the applicant’s earlier mark.

In the process, Transgourmet was required to submit a proof of use of this earlier mark, as Aldi alleged that the older mark was not used in the last 5 years. The success of the invalidity application depends on the fact that the holder of the earlier mark shows that in the last 5 years the mark had indeed been used.

Transgourmet tried to show different uses of the word “GOURMET”, with some figurative elements, such as a chef’s hat and a red frame. In this case, both, Board of Appeal and the Cancellation Division of the EUIPO came to the conclusion that these uses modified the distinctive character of the trade mark, dismissing the invalidity claims. In their opinion there was no evidence of use of the mark (as registered) in the preceding 5 years. According to the Board of Appeal a “genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence and sufficient use of the trade mark on the market concerned”.

For the Board of Appeal, the earlier sign was used but in a different form, not the form that was initially registered (for the elements as we mentioned before, the chef’s hat and the red frame).

So the question was whether using the altered mark in a different way that it was initially registered, could imply that you could not demonstrate its use, since it is not the same form for which the registration was granted.

On the contrary, the General Court understood that these elements (a Chef’s hat and a red flame) would not imply a substantive variation of the registration.

According to the General Court, the public will focus on the denominative element, because it is in a dominant position in relation to the graphic elements, as the chef’s hat is not dominant because of its small size and the red flame is a decorative element. Furthermore, these elements do not change the order of reading, semantic content and phonetic aspect of the term “GOURMET”. Thus, the Court considered that Transgourmet’s mark was indeed put to use in the 5 years preceding Aldi’s filing. This means that they annulled the Board’s decision.

This is a good case to remind us of the importance of using one’s trade mark, because a lack of use may undermine enforcement efforts and even result in a loss of rights. Be careful when using your mark in ways that depart significantly from the form in which it was registered: as seen in this case, using a modified version of the mark may not always be considered as proper use of the registered sign.