We discuss two intriguing trade mark cases in this article, Deutsche Telekom's efforts to secure the colour magenta as a trade mark hit a snag with BOIP, and then we look at Viacom's legal win, where bad faith trade mark applications for "Pierre Cadault" from Emily in Paris were struck down. These cases shed light on regional distinctiveness and what's deemed fair commercial behaviour in the world of trade marks.
Deutsche Telekom – colour marks and distinctiveness
You may be unfamiliar with the name BOIP. The Benelux Office for Intellectual Property ("BOIP") doesn't feature much in our articles, so it's nice to have a story relating to this institution. If you're unfamiliar with the term 'Benelux', according to Wikipedia this is 'a politico-economic union and formal international intergovernmental co-operation of three neighbouring states in Western Europe – Belgium, the Netherlands and Luxembourg.'
Case one: Deutsche Telekom and the colour magenta
A recent BOIP case involving a trade mark registration in the name of Deutsche Telekom goes back all the way to 1995, a dark period when BOIP did not yet examine trade mark applications on absolute grounds such as distinctiveness – some readers may recall that bleak ' anything goes' days!
The Deutsche Telekom registration was for the colour magenta. Magenta, if you're wondering, is according to Wikipedia, a purplish-red colour... located precisely midway between red and blue.
Lebara applies for cancellation
In October 2022, a company called Lebara B.V. applied for the cancellation of the BOIP registration for the colour magenta. The complaint was simple enough – the mark is 'devoid of distinctive character'.
Back to BOIP
BOIP considered the application for cancellation carefully. Before coming to the conclusion that the trade mark was indeed lacking distinctive character. What Deutsche Telekom had failed to do was prove that the trade mark (the colour magenta) had acquired distinctiveness.
You can rely on the Netherlands
Deutsche Telekom was indeed able to establish evidence of significant use and therefore acquired distinctiveness, in one of the three Benelux countries, the 'ne' component of Benelux, which is of course the Netherlands. A survey showed that in the Netherlands 60% of respondents associated the colour magenta (in the context of telecom services) with Deutsche Telekom.
But what about the other two?
Deutsche Telekom was unable to prove acquired distinctiveness for the colour magenta in Belgium and Luxembourg, and therefore in the Benelux region.
The result
Clearly one out of three won't do - Deutsche Telekom had failed to prove that the colour magenta had acquired distinctiveness as a trade mark in the Benelux.
Case two: Viacom – applications filed in bad faith
Emily in Paris is a very popular TV show. An important (fictional) character in the show is a fashion designer, Pierre Cadault. EU trade mark applications for the name Pierre Cadault were filed in classes 3, 9, 14, 18 and 25. However, these applications were seemingly filed without the authority of Viacom. So Viacom was able to cancel the registrations based on bad faith.
To end off, we highlight some excerpts from the judgment about 'acceptable commercial behaviour' that readers may find interesting:
'Nowadays it is very common for products referring to certain characters from motion pictures or TV series to be commercialised to promote these films before they are released in cinemas, or, as in the present case, to enjoy recognition and knowledge that the public has of that film or its particular fictional character(s). In particular, the goods covered by the contested EUTM registration are mostly those specifically used to merchandise motion pictures and, if sufficiently defined and renowned, their fictional characters too.
The below deals with acceptable commercial behaviour for the case:
'In filing the application for the EUTM, without the cancellation applicant's consent, the EUTM proprietor dishonestly sought to obtain the ''Pierre Cadault'' sign in a manner that any reasonably commercially minded person would consider falls short of standards of acceptable commercial behaviour... in the light of the above considerations, the Cancellation Division concludes that the EUTM proprietor acted in bad faith when filing the EUTM application for the fictional character Pierre Cadault.'
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