Advertising - Slogan Check essential

Advertising campaigns are often not checked for problems with earlier marks. That is dangerous, especially if a campaign is planned to run for a long time. Chivas found this out the hard way. Chivas wanted to protect the slogan CHIVAS LIVE WITH CHIVALRY.

A simple check in the registry could have prevented the following problem from ever occurring.
The Scottish Whisky company Glencairn opposed against Chivas’ mark based on its English trademark registration, which concerned a label with the word CHIVALRY. Glencairn won the case. Similarity between an image (label) and a word (slogan) is possible. This is   particularly the case if the earlier mark plays an important role in the overall impression of the brand. In this case, the whole idea is based around the slogan and around the word CHIVALRY. The average consumer may therefore think there is an economic link between the two brands (indirect confusion).

 

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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?