Marchio non distintivo nè ab origine nè in un secondo momento (Game tournaments)

Il marchio è questo, per computer games e altro:

Tribunale UE  T‑776/21 del 26.10.2022, ,Gameageventures LLP,  c. EUIPo, conferma i rigetti (parziali) dell’ufficio.

E’ nullo per mancnza di distintività , nemmeno sorpavvenuta (secondary meaning)

La parte piu interessnte è quella processuale circa le prove offerte per il secondary meaning., §§ 66-88:
<<  79   In order to prove that a significant proportion of the relevant public identified the goods and services concerned as originating from its undertaking, because of the mark applied for, the applicant submitted the following evidence to EUIPO:

–        two written statements;

–        evidence of cooperation with a major e‑sports broadcasting operator;

–        evidence of the provision of informational and promotional services;

–        Google Analytics traffic data for game-tournaments.com, namely the applicant’s website;

–        Extracts from the website game-tournaments.com.

80      First of all, as regards the two written statements, they are taken from persons established in Cyprus and in Sweden, the latter being the founder of an e‑sports team in Denmark. The witnesses stress that their statements are based on their knowledge, experience and impressions. They state that the mark applied for has indeed been put to use, since they have been confronted by its use since 2018 and 2019 respectively.

81      However, the mere fact that the sign has been used within the European Union for some time is not sufficient to demonstrate that the public targeted by the goods or services in question perceives it as an indication of commercial origin (see, to that effect, judgment of 11 April 2019, Adapta Color v EUIPO – Coatings Foreign IP (Bio proof ADAPTA), T‑224/17, not published, EU:T:2019:242, paragraph 111 and the case-law cited). Further, even though the witnesses assert that the mark has been used within the European Union, neither specifies the countries in which that use took place. Therefore, the written statements do not demonstrate use of the mark in the relevant part of the European Union by a significant portion of the relevant public.

82      Next, as regards the evidence of cooperation with a major esports broadcasting operator, that evidence consists of, first, a letter of intent between the applicant and an undertaking based in Cyprus, allowing the applicant to broadcast sporting events and, second, certificates of appreciation for two of those sporting events. That evidence therefore refers only to a single collaboration agreement of one year’s duration and in no way demonstrates that the mark applied for has acquired any distinctive character in consequence of its use.

83      Furthermore, the evidence of the provision of informational and promotional services consists of a sponsorship agreement, an information provision and licence agreement and a set-off agreement between the applicant and an undertaking established outside the European Union. That evidence shows that the applicant provides promotional and informational services, for that undertaking in particular. However, no mention is made in those documents of the countries concerned or of the relevant public. Nor did the applicant explain in the application what the connection was between those documents and the distinctive character acquired through its use.

84      Further, the Google Analytics data on the game-tournaments.com traffic show that thousands of users in Denmark, Finland, Ireland, the Netherlands, Portugal and Sweden visited the applicant’s website between 1 January 2018 and 29 February 2020. It should be noted that Cyprus and Malta are not mentioned there. In that regard, the Board of Appeal rightly pointed out, with regard to the number of residents in those countries, that the number of users represented only 0.1% of the general public in the countries mentioned.

85      Finally, the applicant also provided extracts from the game-tournaments.com website.  Although the mark applied for appears on the various pages of the website, it is not obvious, since it occupies only a small area and is positioned only in the corner of the website pages, that by its mere presence it contributes to any distinctive character of that mark among the relevant public. The applicant merely describes the content of its website but does not explain how the website in question confers distinctive character on the mark applied for.

86      It must be noted that those limited samples, which do not cover all the relevant countries, are not representative of the whole of the relevant public in the part of the European Union where the sign is considered to be devoid of distinctive character. Moreover, given its nature, the evidence provided by the applicant is insufficient to demonstrate that distinctive character has been acquired through the use of the mark applied for.

87      It follows from the foregoing that none of the evidence provided by the applicant is capable of calling into question the Board of Appeal’s finding that the evidence produced is not sufficient to prove that a significant portion of the relevant public is able, because of the mark applied for, to identify the goods and services concerned as originating from a particular undertaking.>>

Ancora respinta la domanda di marchio del tessuto scozzese di Vuitton: manca la prova del secondary meaning

Il Tribunale UE con sentenza 19.10.2022 , T-275/21, Luis Vuitton c. EUIPO, ha riconfermato la nullità del marchio  del noto tessuto (si v. il mio post 24 luglio 20 sulla prima sentenza).

Era stato già dichiarato privo di distintività ab origine ma rimandato all’Ufficio per esaminare la eventuale distintività sopravvenuta.

Ma l’ufficio l’ha negata e così pure il Tribunale.

Sentenza importante non tanto per il gidizio finale nel caso specifico quanto per l’iter motivatorio: sarà il leading case per la determinazione del secondary meaning (ma anche per quella ab origine) nei marchi europei.

Fattori da considerare: <<23   In order to determine whether a mark has acquired distinctive character, account must be taken, inter alia, of the market share held by the mark, how intensive, geographically widespread and long-standing the use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify the product as originating from a particular undertaking, statements from chambers of commerce and industry or other trade and professional associations as well as opinion polls (see judgment of 21 April 2015, Louis Vuitton Malletier v OHIM – Nanu-Nana (Representation of a grey chequerboard pattern), T‑360/12, not published, EU:T:2015:214, paragraph 90 and the case-law cited).>>

da provare in tutti gli stati ue , § 28 (si badi: in tutti)

la parte più interessante è quando poi esmina i singoli mezzi di prova in casau.

Tra i molti ricordo per la suasemrep poco cjhiartr rilevanza quella della presenza in rete

<<84  By contrast, the mere fact that a website on which the mark at issue was promoted is accessible in certain Member States is not sufficient to demonstrate that a significant part of the relevant public in those Member States has been exposed to that mark. The mere existence of a website is not capable of establishing the intensity of use of a trade mark or of the relevant public’s exposure to that mark (see, to that effect and by analogy, judgment of 19 November 2014, Out of the blue v OHIM – Dubois and Another (FUNNY BANDS), T‑344/13, not published, EU:T:2014:974, paragraph 29).

(…) 90  In that regard, it is important to note that whilst, in principle, the fact that a search engine or social network algorithm associates the name of the contested mark and the goods made by the proprietor of that mark may be a relevant indicator for the purposes of assessing distinctive character acquired through use of the contested mark (see paragraph 83 above), it remains the case that the Board of Appeal rightly found that, given the small percentages of data concerning the relevant Bulgarian and Slovakian public, and given the low number of repetitions of the keywords in question, that evidence did not demonstrate an exposure of a significant part of that public to the contested mark.

(…)

967  Lastly, as regards the sites where the top-level domain is general, namely ‘www.upscalehype.com’, ‘www.coolspotters.com’, ‘www.bloguez.com’, ‘www.bagbliss.com’ and ‘www.styleestate.com’, suffice it to state that the applicant has not submitted any substantiated evidence demonstrating that a part of the relevant public in the Member States concerned consulted them. Therefore, the Board of Appeal cannot be criticised for having found that they did not primarily target the Member States concerned (see paragraph 82 above)>>.

Il tribunale UE su marchio costituito da tessuto ornamentale

Sul tema del marchio costituito da un disegno ripetuto (pattern), usato come rivestimento esterno (sulla cui disciplina non sempre c’è chiarezza), si pronuncia il tribunale UE con la sentenza 10 giugno 2020, T-105/19, Louis Vuitton Malletier c. Euipo.

Il motivo della stoffa di cui si chiedeva protezione era del tipo scozzese sulle tonalità del giallo e marron (v. foto in sentenza)

I prodotti indicati in domanda appartenevano alla classe 18 (borse, valigie etc.)

Il Tribunale dà alcuni utili insegnamenti. Ricorda ad es. la decisione del Board of  Appeal (poi <BoA>; del 22.11.2018, che è la decisione contestata) secondo cui a questi marchi si applicano le regole sui marchi tridimensionali , p. 16.

Inoltre, solo se si distanzia significativamente dalle regole e prassi del settore, può dirsi assolvere la funzione distintiva, p. 17.

Rleva poi che il BoA aveva basato il giudizio sul carattere distintivo (negandolo) su fatto notorio (well-known fact), ritenuto sufficiente dal Tribunale, trattandosi di operaizone logico-giuridica del tutto ammissibile,  §§ 19 e 29- 30.

Ecco la descrizione del marchio sub iudice: consisteva  <on the one hand, of a regular pattern of squares in two alternating colours, namely blue and beige, as confirmed by the parties during the hearing, which is reminiscent of a chequerboard pattern and, on the other hand, of a weft and warp structure, which constitutes a pattern within a pattern and appears on the inside of the squares in the manner of a weaving method shown by two interlacing threads> , p. 31.

il Tribunale concorda con il BoA sulla ordinarietà del motivo : <the chequerboard pattern is a basic and commonplace figurative pattern, since it is composed of a regular succession of squares of the same size which are differentiated by alternating different colours, one light and one dark, namely blue and beige. The pattern thus does not contain any notable variation in relation to the conventional representation of chequerboards and is the same as the traditional form of such a pattern>, p. 32.

infatti the <weft and warp [trama e ordito] pattern that appears on the inside of each of the chequerboard squares corresponds with the desired visual effect of interlacing two different fabrics, of whatever type they may be (wool, silk, leather, etc.), which is thus customary as regards goods such as those within Class 18>, § 33.

Perciò bene ha statuito il BoA quando ha detto che <the representation of a chequerboard in the alternating colours of blue and beige and the impression of interlacing threads did not, from a graphic point of view, contain any notable variation in relation to the conventional presentation of such goods, so that the relevant public would in fact perceive only a commonplace and everyday pattern>, p. 34,  e che <the juxtaposition of two elements that were not in themselves distinctive could not alter the perception of the relevant public as to the absence of distinctive character, ab initio, of the mark at issue as a whole. The juxtaposition of a chequerboard and of a weft and warp pattern does not give rise to any element that significantly diverges from the norm or customs of the sector concerned>, p. 35.

E’ dunque esatto affermare che <contrary to the applicant’s claims, the fact that the mark at issue was a basic and commonplace pattern that did not depart significantly from the norm or customs of the sector concerned was a well-known fact within the meaning of the case-law cited in paragraph 30 above>, p. 36.

Il secondo motivo di ricorso riguarda il profilo probatorio,  legato alla difesa di secondary meaning, p. 54 ss

Per accertare il secondary meaning, <the competent authority must carry out an examination by reference to the actual situation and make an overall assessment of the evidence that the mark has come to identify the goods or services concerned as originating from a particular undertaking (…) .   In that regard, account must be taken, inter alia, of the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify the product as originating from a particular undertaking, statements from chambers of commerce and industry or other professional associations as well as opinion polls (…)>, §§ 62-63.

Inoltre, in base al carattere unitario del marchio EU, <a sign must have distinctive character, inherent or acquired through use, throughout the European Union (…) .   Thus a sign may be registered as a European Union trade mark under Article 7(3) of Regulation 2017/1001 only if evidence is provided that it has acquired, through the use which has been made of it, distinctive character in the part of the European Union in which it did not, ab initio, have such character for the purposes of Article 7(1)(b). It follows that, with regard to a mark that is, ab initio, devoid of distinctive character across all Member States, such a mark can be registered pursuant to that provision only if it is proved that it has acquired distinctive character through use throughout the territory of the European Union (see, to that effect, judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraphs 75 and 76 and the case-law cited).> p. 65-66

Anche se il secondary meaning deve provato in tutti gli Stati in cui non c’è era ab initio, sarebbe irragionevole <to require proof of such acquisition for each individual Member State (judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM, C‑98/11 P, EU:C:2012:307, paragraph 62).>, p. 67

Una cosa sono i fatti da provare, altra cosa sono i mezzi adottati a questo scopo: <No provision of Regulation 2017/1001 requires that the acquisition of distinctive character through use be established by separate evidence in each individual Member State> p. 68.

Ci avviciniamo al punto più importante, almeno a fini pratici. E’ dunque possible che le prove dedotte <to establish that a particular sign has acquired distinctive character through use is relevant with regard to several Member States, or even to the whole of the European Union. In particular, it is possible that, for certain goods or services, the economic operators have grouped several Member States together in the same distribution network and have treated those Member States, especially for marketing strategy purposes, as if they were one and the same national market. In such circumstances, the evidence for the use of a sign within such a cross-border market is likely to be relevant for all of the Member States concerned. The same is true when, due to a geographic, cultural or linguistic proximity between two Member States, the relevant public of the first has a sufficient knowledge of the products and services that are present on the national market of the second> p. 69.

Ne segue che, sebbene non sia necessario a fini di registrazione di un marchio privo di distintività in tutti gli stati UE, <that evidence be submitted, in respect of each individual Member State, of the acquisition by that mark of distinctive character through use, the evidence submitted must be capable of establishing such acquisition throughout the Member States of the European Union. In the case of a mark that does not have inherent distinctive character throughout the European Union, the distinctive character acquired through use of that mark must be shown throughout that territory, and not only in a substantial part or the majority of the territory of the European Union, and consequently, although such proof may be produced globally for all the Member States concerned or separately for different Member States or groups of Member States, it is not, however, sufficient that the party with the burden of providing such evidence merely produces evidence of such acquisition that does not cover part of the European Union, even a part consisting of only one Member State >, p. 70.

A conferma di ciò il Trib. ricorda giurisprudenza della CG , per la quale <although it must be proved that the mark at issue has acquired distinctive character throughout the European Union, the same types of evidence do not have to be provided in respect of each Member State (see judgment of 28 October 2009, Combination of the colours green and yellow, T‑137/08, EU:T:2009:417, paragraph 39 and the case-law cited)>, p. 71.

In breve, se ne traggono due insegnamenti:

1) la prova del significato secodnario deve essere data per tutti gli Stati, non solo per una parte sostanziale della UE;

2) la prova può essere cumulativa nel senso che un medesimo mezzo di prova può riguardare più Stati.

Segue poi un dettagliato esame  delle 68 prove (exhibits) , utile a fini pratici.

Il Tribunale , però, qui censura il BoA per aver irrazionalmente selezionato solo alcuni materiali probatori, relativi solo ad alcuni Stati (§§ 81-82 e segg.) e pertanto annnulla la decisione,  § 96