BKIP Limited


2018 big trade mark stories Nov 2018
Bananas for MariKart
One of the most surreal sights on the streets of Tokyo in recent years has been people driving around the streets of Tokyo, driving go karts whilst dressed as Mario Kart characters. However, this fun yet surreal practice may have reached the finishing line as Nintendo has thrown a ‘red shell’ at the company behind this, MariKart for copyright and trade mark infringement. Originally launching proceedings in February 2017, Nintendo has successfully received damages thought to be in the region of around $89,000, but more importantly will prevent MariKart from using any Nintendo IP, which will presumably result in a name change, prevention from hiring out Nintendo costumes to customers, and removing any potential references to the Mario Kart franchise on promotional material. This case highlights the importance of strong intellectual property rights which protects a business from competitors passing themselves of as a more successful bigger business, although in this situation, the free publicity that Nintendo no doubt received from MariKart would have been invaluable and would have been in the best interest of both parties to come to a solution to carry on as they were.
No break this time for Kit Kat shape trade mark
The latest battle in the never-ending trade mark war between Cadburys and Nestle resulted in defeat for Nestle, as it was found that the shape of the kit-kat bar cannot be trade marked. Trade marks do not have to be logos or words, and things such as smells, colours and even store layouts have been trade marked in the past. Originally a trade mark was granted for the shape of the chocolate bar by the European Trade Mark Office, but after an appeal, Nestle had to prove that the shape has distinctiveness in every country. This new test that the EU courts have pushed appears to highly raise the bar needed for a non- traditional trade mark to achieved distinctiveness, and will surely be hard to prove in all 28 countries in the future. As it stands, several notable food brands do have protection over the shape of their product, most famously the shape of Toblerone is protected, the shape of the coca cola bottle, the shape of pringles and Hershey’s kisses.
Saying hello to trade marking a greeting
The word “Bula” pronounced “boolah” a common Fijian greeting has successfully been trademarked in America by a chain of bars and cafes which has enraged Fijians. Anger is so strong, that the Fijian government appears to be ready to officially object to the trade mark. Their anger may be late however, as it can be seen in the US alone, there are already 43 other trade marks for the same name.
Easy Jet and Chill? Airline parent company take on Netflix over Trade mark infringement
The founder of EasyJet, Stelios Haji-Ioannou has taken on Netflix for trade mark infringement over its show “Easy” In a statement, he said “I think this is a case of typically arrogant behaviour by a very large American tech company who never bothered to check what legal rights other companies have outside the US. When Joe Swanberg came up with the name ‘Easy’ for his new TV series a couple of years ago they should have checked with their European lawyers before using it. “We own the European trademark for the word ‘easy’ and another one thousand trademarks with easy as a prefix and we can’t allow people to use it now as a brand name, especially when they are doing it mostly with our colours and font. At least I am pleased that Netflix have said that they will stop at series three anyway. However, we have to stop them from promoting the older series in Europe for online streaming. “Looking into easyGroup’s trade marks, they have over a thousand registered in Europe, including for television services under 41. However, it is not apparent whether easyGroup are actually using their trade mark in this area, which leaves it to the risk of being revoked for non-use. easyGroup will have to prove that the Netflix show would leave the average consumer likely to be confused between the origin of the brand, and that it is potentially passing off as the famous airliner. This will be difficult to prove, as acknowledged in a statement from Netflix, where they fired back “We’re looking into it but think viewers can tell the difference between a show they watch and a plane they fly.”
Messi scores trade mark for his name.
Lionel Messi, arguably one of today’s greatest footballers has successfully secured a trade mark for his name after a ten-year legal battle. Messi had sought to trade mark is name under class 3,9,14,16,25 and 28 but was opposed by popular Spanish cycling brand Massi as the names would be too similar. One of the requirements of a trade mark is that it must not cause confusion to the consumer with the European Intellectual Property Office agreeing and stating that the terms both visually and phonetically are similar. However, after taking it to the General Court at the EU, it has been held that Messi is so famous that it counteracts these problems, and granted Messi the trade mark. With the increasing commercialisation of football, many footballers are capitalising on their fame and securing trade marks, for their name, own logos, signatures, and in Gareth Bale’s case, even trade marking his signature “eleven of hearts” celebration.
Louboutin achieves success for red heel soles
Christian Louboutin’s luxourious shoe brand appears to have successfully defended its trade mark for red soles on the bottom of high heels. Louboutin’s shoes have become synonymous with the colour ever since 1993 when he used an assistance nail polish, which he later trade marked in 1993. He had sued rival Dutch firm Van Haren for copying the design, who had been relying on EU law which prevents popular shapes being trademarked. However, the European Court of Justice backed Louboutin stating “The mark does not relate to a specific shape of sole for high-heeled shoes since the description of that mark explicitly states that the contour of the shoe does not form part of the mark and is intended purely to show the positioning of the red colour covered by the registration,” This decision again emphasises that strong trade marks do not necessarily have to be traditional names and logos and can now be colours and designs. Having built up strong brand recognition for over 20 years for its red sole design, the decision strengthens Louboutin’s brand, and prevents any rivals passing off. Care must be given when giving out non-traditional trademarks such as coloured soles, as in the future creativity may be stifled if too many monopolies are given for certain designs.