Oakley, Inc. Successfully Appeals Against Definitive Refusal of International Trademark FROGSKINS
Trademarks are a valuable asset for businesses of all sizes, providing legal protection for unique names, logos, and designs that help to distinguish their goods or services from those of their competitors.
However, obtaining a registered trademark is not always a smooth process, and it’s not uncommon for trademark applications to face provisional refusal (or proposed rejection) or even definitive refusal from the Indonesia DGIPR (Directorate General of Intellectual Property) Office. When this happens, it’s essential for trademark applicants to consider filing a reply to an office action or an appeal petition with the Trademark Appeal Commission.
In this article, we will explore an appeal petition case pertaining to trademark FROGSKINS in class 18 which was filed under International Registration No. 1568166 dated 27 November 2020.
We hope that by understanding the appeal process and taking proactive steps to address issues with their trademark applications, businesses can protect their valuable brands and gain a competitive advantage in the marketplace.
Table of Contents
Background Story
The Appellant, Oakley, Inc., is a well-known fashion brand with a great reputation that was established in 1975 and is one of the leading product design and sports performance brands in the world, chosen by world-class athletes.
OAKLEY extended its position as a sports eyewear brand into apparel and accessories, offering men’s and women’s product lines that appeal to sports performance, active and lifestyle consumers.
FROGSKINS was originally released in 1985 as the first lifestyle eyewear brand that was designed to appeal to a wider range of consumers. The unisex styling and variety of colour options made it an instant classic.
Currently FROGSKINS brand is now expanding also to other fashion fields, i.e. bags, briefcases, luggage, travel bags, wallets, etc.
FROGSKINS sunglasses are also popular among famous and stylish athletes, actors, and singers,…such as Liv Tylor, Zac Efron, Kanye West and many more.
International Trademark Registration
On 27 November 2020, the Appellant, represented by the Office of Karen Kreider Gaunt, Dinsmore & Shohl LLP, registered their international trademark FROGSKINS no. 1568166 in class 18 under Madrid Protocol (WIPO) based on basic US application.
The designated countries are Australia, Brazil, Canada, China, Colombia, European Union, UK, Indonesia, India, Japan, Mexico, Malaysia, New Zealand, Russian Federation, Singapore, and Thailand.
The coverage of the goods in class 18 includes bags, backpacks, tote bags, duffel bags, hiking bags, sports bags, key cases, carrying cases, overnight cases, overnight bags, briefcases, luggage, travel bags, drawstring bags, wallets.
Trademark FROGSKINS application was received by the Indonesia DGIPR Office on 1 January 2021 under No. M0020211568166 and published in the Trademark Official Gazette on 18 February 2021.
Provisional Refusal in Indonesia
On 8 December 2021, International Bureau of World Intellectual Property Organization notified the Appellant concerning the provisional refusal of trademark FROGSKINS International Registration No. 1568166 in class 18 from the Indonesia DGIPR Office.
The provisional refusal was based on an ex-officio examination which affects all the goods and/or services.
The grounds for refusal:
- The trademark of this application is not eligible for registration under Article 20(b) of the Trademark Law because this trademark is related to the goods and/or services being applied for registration.
- The word FROGSKINS or FROG SKINS can describe a kind and characteristic of the goods such as bags and wallets all being made from frog skins or synthetic frog skins. Therefore, it is considered as related to the goods being applied for registration.
In response to this provisional refusal, the holder of the international registration may submit to the DGIPR Office a written reply against this provisional refusal through the intermediary of a representative domiciled in Indonesia within 30 (thirty) days from the date on which this provisional refusal was sent by the International Bureau.
Reply to the Office Action
For the purpose of submitting their response to the Indonesian DGIPR Office, the Appellant elected the Office of Pulungan, Wiston & Partners to represent them in the matter, and a reply to the office action was submitted to the DGIPR Office on 14 January 2022 under no. 03678/2022
The grounds for the reply to the office action are as follows:
a. Worldwide Registration and Use of Trademark FROGSKINS
The Appellant is the first user and first registrant in Indonesia as well as the sole owner in Indonesia of the brand FROGSKINS to protect goods belonging to class 18, especially for types of goods “bags, backpacks, tote bags, duffel bags, hiking bags, sports bags, key cases, carrying cases, overnight cases, overnight bags, briefcases, luggage, travel bags, drawstring bags, and wallets”
In addition to the application for the trademark FROGSKINS in class 18, the Appellant is also the owner of the trademark FROGSKINS registration no. IDM000083145 in class 09 dated 26 November 2006 and now has been extended to 26 November 2026.
Apart from being registered in Indonesia, the trademark FROGSKINS has also been registered in various countries in the world such as Australia, Brazil, Canada, China P.R., Colombia, Germany, France, Great Britain, Indonesia, Italy, Japan, Mexico, Malaysia, French Polynesia, Paraguay, Singapore, Thailand, Taiwan, United States, and South Africa.
The appellant has also spent an enormous amount of money to promote the brand for various kinds of goods and they are not made of batrachians (frog) skin.
In the efforts of promoting and introducing their brand to consumers in various countries in the world, our Clients already have an official website with the addresses https://www.oakley.com/en-us and https://www.oakley.com/en-eu/product/W0OO9013 which can be accessed from all over the world including in Indonesia to obtain the following information the Appelleant’s company history and company profile, products using trademark FROGSKINS, distribution of FROGSKINS products worldwide, and other information proving that trademark FROGSKINS is well known in the world.
b. The Goods of Trademark FROGSKINS Are Not Descriptive in Relation to the Goods in Class 18
The ground for the provisional refusal of trademark FROGSKINS which is based on the provisions of Article 20 letter (b) of Law No. 20 of 2016 because the trademark is related to the goods and/or services that are being applied for registration is a surprise to the Appellant and accordingly, the Appellant submits their reply to the office action to object such ground and argues that trademark FROGSKINS is not descriptive in relation to the goods in class 18.
This argument is proven by the registration of the Appellant’s trademark FROGSKINS in various countries in the world including Indonesia under registration no. IDM000083145 in class 09 for eyewear products which clearly indicates that the Intellectual Property Offices do not consider trademark FROGSKINS as descriptive in relation to the goods in class 18.
If the trademark FROGSKINS can be registered in various countries in the world, including Indonesia, there is no reason not to accept its registration in class 18 for the reason stated in the provisional refusal.
Trademark FROGSKIN is simply a product name invented by the Appellant. It is appropriate, therefore, that the mark be considered for registration.
Further on, the wordmark FROGSKINS should not be simply dissected into “FROG” and “SKINS” as it was applied for as one word and not as two separate words.
While dictionary references for “FROG” and “SKINS” can indeed be “a frog is a small creature with smooth skin, big eyes, and long black legs which it uses for jumping” and “an animal skin is a skin which has been removed from a dead animal”, FROGSKINS as a word does not exist in the conventional English dictionaries.
In the Collins Dictionary (which the Examiner uses in the provisional refusal), there is no result for the word FROGSKINS.
If FROGSKINS is divided into two words, then we get “FROG” which is a singular noun and “SKINS” which is a plural noun. A relative consumer would in that case expect either “FROG” or “SKIN” (two singular nouns) or “FROGS” or “SKINS” (two plural nouns) but not “FROG” “SKINS” (a singular and a plural noun together) as it is not grammatically correct and is thus unexpected for the relative consumer.
The unexpected combination of two common dictionary words, that are uniquely placed together, is therefore forming an instant trademark, that is captivating and appealing to the consumer. It leaves a distinctive imprint on the minds of consumers and is therefore capable of distinguishing goods from those of others, and as such serves as a trademark.
On the other hand, “FROGSKIN/FROGSKINS” can be found as a term in urban dictionaries but has a completely different meaning. Based on the Merriam-Webster Dictionary, “FROGSKIN” is a noun which in unofficial language means “a piece of paper money, especially a dollar bill”.
In order for a trademark to be deemed as descriptive, there must be a sufficiently direct and specific relationship between the trademark and the goods in question, for instance using the trademark APPLE for apples.
Intellectual Property Offices worldwide have already given protection to FROGSKINS including Property Offices in English-speaking countries such as Great Britain and Canada that deemed FROGSKINS as not descriptive for the goods “cases” in class 09 which are similar to the goods “bags” in class 18.
The public’s perception of the trademark is also an important aspect to distinguish goods and/or services from different origins. If the relevant consumer is able immediately on first impression to perceive the sign as an indicator of origin, then that sign has the requisite distinctiveness to function as a trademark cf. Sykes Enterprises v OHIM (Real People Real Solutions) [2002] ECR II-5179.
It is absolutely no surprise that the first few pages of the search results always relate to FROGSKINS glasses and sunglasses by OAKLEY, which indicates the significance of the FROGSKINS brand as clearly linked and connected to its proper origin, i.e. the current applicant OAKLEY. Consumers will thus connect the FROGSKINS bags, wallets and other products as an extension of the eyewear brand itself as all these products belong to the fashion industry, source/origin from OAKLEY and are sold through the same channels and have the same relevant consumers.
A trademark can be deemed descriptive only if it directly indicates or describes the natural and intrinsic and permanent characteristics of the goods i.e. using the trademark TOMATO for tomatoes.
Indeed, whenever a sign does not describe but merely suggests a concept that could be linked to the items covered, then it is clear that the mark needs to pass the absolute grounds test and be allowed to register.
Trademark FROGSKINS does not describe any concrete characteristic of the items covered and should then be allowed for registration.
DGIPR’s Definitive Rejection
Through the official notice dated 19 February 2022, DGIPR Office Notification notified the representative of the Appellant that the reply to the office action of 14 January 2022 no. 03678/2022 was not accepted and the provisional refusal for all types of goods and/or services became definitive.
Reason for refusal:
An application for registration of a mark cannot be registered under the provisions of Article 20 letter (b) of Law No. 20/2016 concerning Trademarks and Geographical Indications if it is considered that the trademark is related to the goods and/or services being applied for registration.
Despite Appellant’s arguments presented in the reply to the office action, the trademark examiner at the DGIPR Office still viewed that trademark FROGSKINS in class 18 is considered to be related to the kinds of goods applied for.
The official notice also informed that the Appellant through their elected attorney may submit a written appeal against the decision to the Trademark Appeal Commission within a maximum period of 90 (ninety) Days from the date of sending the notification of refusal.
Accordingly, on 5 July 2022 a petition of appeal to the Trademark Appeal Commission was duly filed.
Trademark Appeal Commission’s Decision
The decision of Trademark Appeal Commission no. 1368/KBM/HKI/2022 was given on 30 September 2022 in favour of the Appellant.
The considerations of the favourable decision are as follows:
The Trademark Appeal Commission views that trademark FROGSKINS Agenda No. M0020211568166 filed by the Appellant is not descriptive to goods/services upon which the registration has been applied for, but simply a name invented by the Appellant. This argument is proven by the registration of trademarks FROGSKINSTM owned by the Appellant in various countries in the world.
Taking into account that the trademark FROGSKINS has been used in various countries in the world, including in Indonesia and has been registered in Indonesia and in various countries in the world, it is accordingly appropriate that the mark be considered for registration.
The consideration based on Article 20 letter b of Law Number 20/2016 Concerning Trademarks and Geographical Indications is not appropriate and incorrect. Thus the refusal must be annulled by granting the appeal petition from the Appellant in its entirety.
The Trademark Appeal Commission has therefore decided to be
- Granting the Appellant’s Petitioner’s Appeal in its entirety.
- Ordering the Directorate of Trademarks and Geographical Indications, Directorate General of Intellectual Property, Ministry of Law and Human Rights to issue the certificate of registration for trademark FROGSKINS Agenda No. M0020211568166 and convey the same to the Appellant as referred to in Article 30 paragraph (2) of Law Number 20/2016 concerning Trademark and Geographical Indications.
Takeaways
Obtaining a registered trademark is not always a smooth process, and it’s not uncommon for trademark applications to face provisional refusal (or proposed rejection) or even definitive refusal from the IndonesiaDGIPR (Directorate General of Intellectual Property) Office. When this happens, it’s essential for trademark applicants to consider filing a reply to an office action or an appeal petition with the Trademark Appeal Commission.
In order to be registered, a trademark must be distinctive. The unexpected combination of two common dictionary words, that are uniquely placed together, is therefore forming an instant trademark, that is captivating and appealing to the consumer. It leaves a distinctive imprint on the minds of consumers and is therefore capable of distinguishing goods from those of others, and as such serves as a trademark.
In order for a trademark to be deemed as descriptive, there must be a sufficiently direct and specific relationship between the trademark and the goods in question. A trademark can be deemed descriptive only if it directly indicates or describes the natural and intrinsic and permanent characteristics of the goods i.e. using the trademark TOMATO for tomatoes.
Indeed, whenever a sign does not describe but merely suggests a concept that could be linked to the items covered, then it is clear that the trademark needs to pass the absolute grounds test and be allowed to register.
Photo by Chris Altamirano on Unsplash
(for illustration only, unrelated to the article’s content)
Articles