• Skip to main content
  • Skip to primary sidebar
  • Skip to footer
+49 (0) 69 / 606 278 – 0
[email protected]
Contact form
Patent- & Rechtsanwaltskanzlei

Patent- & Rechtsanwaltskanzlei

  • Deutsch

+49 (0) 69 / 606 278 – 0

  • Facebook
  • Twitter
  • Instagram
  • LinkedIn
  • xing
  • Email
MENUMENU
  • Services
    • Advice On Protective IP Rights
    • Patent Application /TM Registration
    • Enforcement Of IP Rights
    • Defence Against IP Rights Enforcement
    • Costs
  • Company
    • Fields of Law
      • Patent Law
      • Utility Model Law
      • Employees’ Inventions
      • Trademark Law
      • Design Law
      • Trademark and Product Piracy
      • Expert Opinions
    • Our Law Firm
      • Dr. Karl-Hermann Meyer-Dulheuer
      • Dr. Tim Meyer-Dulheuer
      • Dr. Klaus Zimmermann
      • Zhichao Ying
      • Clara Elinor Grünewald
    • Commitment
  • Contact
    • Where To Find Us
    • Write us!
    • Request call back
  • Blog

Asics loses in brand dispute over well-known logo

6. November 2018

According to the European Court, an EU figurative mark consisting of four intersecting lines is not similar to an earlier figurative mark of the well-known sports mark Asics, which also consists of four intersecting lines. The overall visual impression of the respective figurative marks is completely different.

Asics opposition to EUIPO trademark registration

asics figurative marksThe applicant in this case is the right holder in the earlier figurative mark, Asics Corporation, established in Kobe (Japan). In July 2013, the intervener Van Lieshout Textielagenturen BV, established in the Netherlands, applied to the European Union Intellectual Property Office (EUIPO) for registration of an EU figurative mark in Classes 18, 24 and 25 of the Nice Agreement. That figurative mark showed four crossing thin lines arranged as in a cross pattern, each with two parallel diagonal lines crossing each other. In October 2013, the applicant Asics Corporation filed a notice of opposition against that trade mark registration. The Opposition Division and then, in 27 June 2017 (‘the contested decision’), the Board of Appeal of EUIPO rejected the opposition, since the overall visual impression of the respective figurative marks was completely different. Asics brought an action against that decision.

IP rights and the proceedings in focus before the CJEU

First objection

The applicant relies essentially on two pleas in law. By the first plea, Asics accused the Board of Appeal of wrongly refraining from making a comparison between Asics’ earlier Spanish trade mark and the mark applied for. The applicant’s opposition was based on the EU figurative mark for Nizza classes 18, 25 and 28 and a Spanish figurative mark for goods in class 25, but a comparison was made only between the EU figurative mark and the mark applied for. However, the Court of Justice of the European Union (CJEU) clearly rejected that plea. The Board of Appeal did not disregard the existence of the earlier Spanish figurative mark but ignored it for comparison with the mark applied for. The Board of Appeal found that there were slight differences between Asics’ two earlier marks and that it therefore acted correctly.

Second objection

AsicsBy its second allegation, Asics submits that the Board of Appeal was wrong in finding that the signs at issue were, taken as a whole, different. Since the two figurative marks represent four intersecting lines, they are significantly similar. In particular, the shape in which the mark applied for may appear on the goods covered cannot be excluded from comparison. Thus, Asics referred, inter alia, to sports footwear of the well-known trade mark on which the Asics logo is indeed perceived as slightly bent.

The CJEU rejected this objection. The comparison as to how the earlier figurative mark might appear on sports shoes is irrelevant for the comparison with the disputed mark applied for. It is clear from case-law that the likelihood of confusion must be assessed by comparing the signs as registered or as appearing in the trade mark application.

The convergence and intersection of the straight lines and the curved lines in the earlier figurative marks of Asics conveys an impression of movement which a consumer cannot in any way confuse with the sign applied for with its straight and parallel lines.

Allegation of exploitation of earlier well-known mark

Asics had also argued that there was a likelihood of confusion, in particular because of the highly distinctive character of the earlier marks with a reputation. The Court made it clear, however, that if there was no similarity between the earlier marks and the figurative mark applied for, there would be no basis for a likelihood of confusion between the signs in question. It is also irrelevant whether the earlier marks are highly distinctive or whether the goods or services in question are identical or similar. Asics’ opposition was therefore rejected in its entirety.

Would you also like to protect your brand or trademark?

Then please do not hesitate to contact us. Our patent attorneys and attorneys at law are experienced and highly qualified in all areas of intellectual property law, both nationally and internationally.

Request your call-back without any obligations!

CAT-call_en

 

Sources:

T:2018:685 Asics Cooperation

Picture:

Hans /pixabay.com / CCO License  

  • share  
  • share 
  • share 
  • tweet  
  • share 

Category iconInternational Intellectual Property,  Trademark Law Tag iconbrand protection,  EUIPO,  Unionmark,  brand,  Union figurative mark,  Board of Appeal,  figurative mark,  use of earlier mark,  earlier brand,  intersecting lines,  2D,  Asics

Reader Interactions

Leave a Reply Cancel reply

Your email address will not be published. Required fields are marked *

Primary Sidebar

More articles about: International Intellectual Property

All articles

Blog Menu

  • Design Law
  • Healthcare & Lifesciences
  • International Intellectual Property
  • Licenses
  • News from our law firm
  • Overall
  • Patent Law
  • Product- and Trademark piracy
  • Trademark Law
This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

Recent Posts

  • BGH “FRAND II” – SEP Licensing as Distributor? 2. March 2021
  • Suspension of infringement proceedings 1. March 2021
  • Action against a patent already expired 26. February 2021
  • Design protection in China: Amendment 2021 25. February 2021

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Das könnte Sie auch interessieren:

1. March 2021
Suspension of infringement proceedings

Suspension of infringement proceedings

16. February 2021
BGH: Black Forest ham – not only packaged in the Black Forest

BGH: Black Forest ham – not only packaged in the Black Forest

16. February 2021
UK trademark after Brexit: earlier UK trademark in opposition

UK trademark after Brexit: earlier UK trademark in opposition

11. February 2021
EU figurative marks: Panthé figurative mark – a panther mark?

EU figurative marks: Panthé figurative mark – a panther mark?

9. February 2021
BGH ruling: Classe E versus German E-Klasse

BGH ruling: Classe E versus German E-Klasse

5. February 2021
Trade secret: what are ‘appropriate’ secrecy measures?

Trade secret: what are ‘appropriate’ secrecy measures?

Footer

Contact

Franklinstr. 61-63
D-60486 Frankfurt am Main
Germany

+49 (0) 69 / 606 278 – 0
+49 (0) 69 / 606 278 – 199
[email protected]

Customer Reviews

Meyer-Dulheuer MD Legal Patentanwälte PartG mbB Patentrecht, Markenrecht, Eigentum hat 4,78 von 5 Sternen 23 Bewertungen auf ProvenExpert.com

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Law Firm

  • Request non-binding call back
  • Info secure emails
  • Company
  • Our Law Firm
  • ISO Certificate
  • Privacy Policy
  • Data handling for clients
  • Imprint

Follow Us

  • Facebook
  • Twitter
  • Google+
  • LinkedIn
  • xing
  • Email

Newsletter Signup

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

© Patent- & Rechtsanwaltskanzlei Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Kontaktformular

 

Rufen Sie uns an, schicken Sie uns eine Mail oder füllen Sie das Kontaktformular aus.

+49 (0) 69 / 606 278 – 0
[email protected]

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

Contact Form

 

Give us a call, send us an email or fill out the contact form.

+49 (0) 69 / 606 278 – 0
[email protected]

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form