Forgetting to register your trademark: time for a rebrand!

Dung Young Food Services started a wholesale store specializing in Asian products in 1957. Since 2011, they have been selling more than 150 different products under the private label AKAYA in six countries. However, the company forgot to register its trademark.

 

Bidfood is a global online wholesale distributor. Since 2018, they have been selling Asian food products under the private label AKARI. Bidfood did register its brand.

When in 2019, after eight years, Dung Young decided to finally register their brand, Bidfood successfully objected. The trademarks were deemed similar and applied for identical products. As a result, the AKAYA trademark application was rejected.

But that's not all. Bidfood also demanded a ban on further use in court, and this request was granted. The argument of prior use in good-faith did not hold up. Trademark rights are obtained through registration, not through use.

Bidfood's trademark registration was not considered to be in bad faith because it was developed by a sister company in Australia in 2016. When the brand proved successful in Australia, they decided to expand the activities into the European Union. The trademark is valid and a European ban on the use of the AKAYA brand follows. If you use a brand, make sure to register it! (Source image: Abcor)

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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?