On trade marks and design protection

Good morning everyone and a warm welcome for the month of June. The situation is still unusual but we are here to bring you some light-hearted IP news.

XOXO cannot be registered as a trade mark

What is the first thing that comes into mind when you see XOXO? Usually, it is the shorter version for “kisses and hugs” or it might remind you of “Gossip Girl”… Regardless, the General Court of the EU just confirmed the decision made in 2017 by the EUIPO that “XOXO” cannot be registered as a trade mark (the application covered perfumery and cosmetics, jewellery, textiles and accessories). The EUIPO considered that, based on Article 7(1)(b) of the EUTMR, the trade mark in question was devoid of distinctive character and incapable of identifying a trade mark. Here, XOXO is immediately perceived by the “relevant public” a promotional message (hugs and kisses) that has been used on numerous products, from T-shirts to greeting cards. Furthermore, the mark in question did not include any other element that would make it possible for consumers to distinguish it from those of a competitor.

First conclusion: signs with a merely promotional meaning do not have sufficient inherent distinctiveness to be registrable, alone, as a trademark before the EUIPO.

A good reminder brought by this case and all our readers should take into account. The EUIPO is not bound by its previous decisions nor by the decisions taken by national IP Offices. When deciding on the registrability of a trade mark, the EUIPO is solely bound by EU rules, in this case, the EU trade mark Regulation 2007/1001.

Piaggio wins design infringement case against a Chinese copy of its Vespa

Piaggio was in for a shocking surprise in 2019, when, while attending the Milan Motorcycle Show, they discovered a Chinese brand showcasing a scooter that “borrowed” the distinctive characteristics of their famous “Vespa Primavera”. Piaggio then took action and filed before the EUIPO to have the Chinese design invalidated. The EUIPO released its decision last week in which the Office sided with Piaggio. Indeed, the EUIPO established that the Chinese design was incapable of producing a different general impression when compared to the original registered design of the Vespa Primavera (meaning, at first sight, a consumer could believe that the Chinese copy was actually a Vespa). As a consequence of this unlawful attempt to reproduce Vespa’s aesthetic elements, the registration of the Chinese motorcycle was annulled by the EUIPO.

Oreo vs. Twins

For those of you who don’t live in Spain, Twins is a cookie produced by Gullón and that looks like an Oreo (black cookie, white filling and round shape) [they don’t taste the same though, the writer vouch for that]. The conflict goes all the way back to 2015 when Gullón filed before the EUIPO for registration of the brand “Twins” (cookie with white filler) as well as for the colours of the packaging. Back then, Intercontinental Great Brands (the owners of Oreo) filed its opposition for the registration of Twins based on the strong resemblance of the cookie and the packaging (where blue is the dominating colour). Indeed, according to the US company, this entails a great risk of confusion amongst consumers.

2017 arrives and the EUIPO upheld the opposition. Hence, Gullón appealed before the Board of Appeal of the EUIPO who dismissed the appeal in 2018. And from there the matter was taken to the General Court, who just confirmed the initial decision by the EUIPO. Indeed, although there are certain elements to differentiate both cookies (the brand “Gullón” and the name “Twins”), the court considers that Gullón is trying to take advantage of the fame of the Oreo by presenting a cookie that is visually similar to the original Oreo, taking advantage of the Oreo’s popularity.

This is all for today’s news. Enjoy the month of June and be safe!