The only intellectual property case posted on the Curia today is Case T-161/07 Group Lottuss Corp. v OHIM, Ugly, Inc. Unfortunately for the monolingual IPKat, the decision is posted only in French and Spanish. The Kat is posting the pretty figurative mark that lies at the heart of the dispute in the hope that some kind person will let him and his many readers know (i) what it means and (ii) whether it's of any significance.
Meanwhile, the IPKat thinks that the applicant wanted to register as a Community trade mark the words UGLY INC and that versions of the COYOTE UGLY mark -- both registered and unregistered -- have been raised by the opponent. Beyond that, he's in some doubt. Please help him if you can!Coyote Ugly: the movie
Coyote Ugly: the saloon
Coyote: the mammal
The curious case of the untranslated coyote
Reviewed by Jeremy
on
Tuesday, November 04, 2008
Rating:
Reviewed by Jeremy
on
Tuesday, November 04, 2008
Rating:
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Lottuss applied to register the COYOTE UGLY logo mark for goods and services in classes 9, 41 and 42. Ugly, Inc. opposed it on the basis of, inter alia, an earlier CTM registration of COYOTE UGLY covering class 32 goods including beers.
ReplyDeleteOHIM's opposition division agreed that the application should be refused for the class 42 services (cocktail lounge services) but not for the goods and services in classes 9 and 41.
On appeal by both parties, the Board of Appeal went further than the opposition division and found that the application should also be refused for some of the class 41 services, eg nightclub services.
The CFI has now used one of its favourite neologisms - complementarity - to hold that consumers might perceive a link between the beers of the opponent and the bar/nightclub services of the applicant. It has therefore rejected the appeal and made an unusual costs decision: Lottuss must pay its own costs, 80% of OHIM's and 80% of Ugly's; Ugly must pay 20% of its own costs and 20% of OHIM's. Time to get out the abacus!
Catriona Smith (Rouse Legal) emailed to say: "I think, from reading the Spanish, that the key point relates to Article 43(2) of Regulation 40/94 and is interesting. The applicant, Lotuss, had applied to register a logo with the dominant words “Coyote Ugly” for various products, which was opposed by Ugly Inc partly on the grounds of an earlier word mark for “Coyote Ugly” registered for beers. After the usual discussion of the degree to which the earlier mark could stop registration of the later application, the court looked at the impact of a successful application by Lotuss in 2007 to revoke the earlier mark for non-use.
ReplyDeleteThe court said that the revocation of Ugly Inc’s mark was irrelevant to Ugly Inc’s opposition to the Lotuss mark. Article 43(2) enabled Lotuss to ask Ugly Inc for evidence of use of its mark during the opposition, but only if the mark had been registered for at least 5 years at the date of publication of the Lotuss application, which in this case was in 2002, by which time Ugly Inc’s mark had only been registered for a year. Therefore Ugly Inc did not have to produce evidence of use in relation to the opposition. Ugly Inc’s mark was only revoked with effect from 2007, the date of the application for revocation (caducidad), so was still in effect in 2002, and could be used to oppose Lotuss’ application.
A sorry example of the muddle caused by oppositions taking over 5 years to resolve".
Many thanks, Catriona.