Trademarks – Page 19 – IP Law Watch

Lack of distinctiveness as an obstacle for EUTM registration

Jun 21 2017

The distinctiveness of a trademark is one of the conditions for obtaining a European Union trade mark (EUTM) registration. The concept of a trademark is defined through the prism of distinctiveness as its inherent characteristic, and also its basic function. This distinctiveness may be inherent (due to the unprecedented and extraordinary structure or content of the sign) or acquired (as a result of use of the sign on the market). Distinctiveness should be possessed by each representable and sensory perceptible sign capable of distinguishing goods or services that should perform the functions of a trademark in business or trade.

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By: Michał Ziółkowski

New regulation on the protection of EU trademarks

Jun 17 2017

On 16 June 2017, we saw the publication of the Regulation of the European Parliament and of the Council (EU) 2017/1001 of 14 June 2017, on the European Union trademark (OJEU L 154 of 16.06.2017), which is de facto the uniform text of Regulation No. 207/2009 as amended as a result of Regulation No. 2015/2424. The new regulation entered into force 20 days after being published in the Official Journal of the European Union and will apply starting 1 October 2017.

The publication of the new regulation is the result of a legal reform of trademarks in the EU. Because Regulation No. 207/2009 was amended significantly several times, for the sake of clarity and comprehensibility, the provisions have been unified.

The provisions of Regulation 2017/1001 are identical with those that were introduced by Amendment Regulation No. 2015/2424 and contain, among other items, a new definition of the term “trademark.”

Source: http://eur-lex.europa.eu

By: Michał Ziółkowski

UK Appointed Person gives first decision in registered design appeal

May 18 2017

The first decision on an appeal to the Appointed Person under a new regime for designs has been issued. The appeal in this first case was against a decision by a hearing officer for the IPO to invalidate two registered designs consisting of a garment with a modified Union flag on the chest, in response to a request from a competitor of the rights owner.

“Deluxe” as a word element of a trademark – ruling of the EU Court of Justice

May 17 2017

On 17 May 2017, the EU Court of Justice issued a ruling in a case between the European Union Intellectual Property Office (EUIPO) and Deluxe Entertainment Services Group Inc. concerning a graphic trademark containing the word element “deluxe.”

Distinctiveness of a mark (packaging of Knoppers waffles) – ruling of the EU Court of Justice

May 04 2017

We reported previously, in Bulletin No. 2 /2016 (page 15), on a case of the registration of the graphic trademark (shown below, packaging for Knoppers waffles, without any additional markings, with protection only for the two-colored background) for goods from class 30 of the Nice Classification, namely confectionery products, chocolates, chocolate products, cakes, ice creams, and ingredients for manufacturing such products.

Dispute over the similarity of the marks “NIMORAL” and “NEORAL” – ruling of the EU General Court

Apr 06 2017

In a ruling on 6 April 2017, in case No. T-49/16, the EU General Court upheld a decision by the EUIPO Fourth Board of Appeal dismissing a complaint by the company Azanta A/S (Azanta) against a decision to refuse to register the word trademark “NIMORAL.”

Azanta submitted that mark on 23 October 2013, applying for protection in respect of goods belonging to class 5 of the Nice Classification corresponding to the following description: “Pharmaceutical preparations improving the effectiveness of radiotherapy in treating cancer patients.” On 2 December 2013, an objection against that registration was raised by the company Novartis AG based on the previous registration of the EU trademark “NEORAL” for goods belonging to class 5 of the Nice Classification corresponding to the following description: “Pharmaceutical preparations.”

The Laguiole trademark saga: Victory can be a double-edged knife

Apr 05 2017

The European Union Court of Justice confirmed the intellectual property rights owned by the French company “Forge de Laguiole”, but solely in areas in which it pursued an actual business activity.

A decision [1] dated 5 April 2017 of the European Union Court of Justice (EUCJ) put an end to the longstanding series of court decisions about the Laguiole trademark before the European Union jurisdictions (EU Jurisdictions), on which relied the right for French company “Forge de Laguiole” to keep using its business name. This decision also gave the EUCJ the opportunity to clarify the application of national case law by the EU Jurisdictions within the framework of proceedings based on Article 8 (4) of Regulation No 207/2009 (the “Regulation”) [2].

Proceeding on a submission of a graphic trademark – ruling of the European General Court (Anta (China) vs. EUIPO)

Apr 05 2017

The EU General Court upheld a decision by the EUIPO Board of Appeal in the case of Anta (China) vs. EUIPO, in accordance with which a graphic mark consisting of two lines forming an acute angle, submitted in respect of various goods from classes 18, 25, and 28, does not possess distinctiveness (case No. T-291/16 of 5 April 2017). In this context, it is worth paying some attention to the conditions concerning distinctiveness for a trademark that is purely graphic in form (i.e., that has no verbal component whatsoever), in particular in respect of goods such as footwear and clothing.

Threats Not Groundless Because Proceedings are Ultimately Not Issued

Apr 05 2017

In the UK, in a decision that will provide additional comfort to trade mark owners seeking to protect their intellectual property rights in the UK, the High Court held that a threat issued by a trade mark owner was not groundless simply because it was never followed up by proceedings being issued.

In Vanderbilt v Wallace & Ors [2017] EWCH 45 (IPEC), the High Court held that “the emphasis is on whether the acts actually infringe or, if done, would infringe, not on whether a proprietor actually sues for infringement. The phrase does not impose an obligation to commence legal proceedings for every act complained of.”

The case involved a long running trade mark dispute between the claimant and defendant, including several concurrent actions. In this instance the defendant had argued that section 21 of the Trade Marks Act 1994 established that where threats are made the trade mark proprietor has to bring a claim in relation to everything that is the subject of a threat, and that if they fail to do so then the threats can never be justified, even if there is infringement.

The Court disagreed. It stated that there are often valid commercial reasons why a trade mark owner may elect not to issue proceedings even if there is an obvious infringement. The Court will consider the validity of the claim on its own and whether the acts complained of constitute an infringement, regardless of whether proceedings have been issued following any threats to sue.

In addition to providing clarity, this outcome will please trade mark owners. Provided that they have established infringement they can send cease and desist letters without worrying about issuing legal proceedings that may not be commercially desirable.

By: Nóirín McFadden and Jamie Kershaw

The Italian Government Launches a Tender for Granting Allowances for the Promotion of Historical Trademarks

Jan 23 2017

2017 provides companies based and operating in Italy with a new opportunity for promoting their IP assets.

The Italian Government has launched a tender for granting allowances intended to support historical trademarks, for a total amount of 4,5 million Euro. The purpose of this new initiative is to promote and boost the historical and cultural entrepreneurial heritage of Italy by supporting specific national trademarks.

Allowances are granted for expenses related to manufacturing and commercial promotion of the historical trademark. This includes the purchase of goods and services for manufacturing purposes based on a plan for the promotion of the trademark involving goods and services falling under the scope of protection of the trademark – i.e. Nice classes for which the trademark is registered.

Further allowances could be also granted for activities related to the strengthening of the historical trademark, its extension at European and international level and to Nice classes other than those for which the trademark was previously registered, provided that their application comes along with another one for allowances related to the promotion of the trademark as described above.

In order to obtain the benefit of such allowances, companies of micro, small and medium dimensions complying with specific requirements must prove that their historical trademark is valid, registered before the Italian Patent and Trademark Office (UIBM) or the EUIPO with seniority claim for registration before the UIBM, not revoked, and that its application for registration was filed before the UIBM before January 1, 1967.

Companies can file their application from April 4, 2017 and until allowances stock lasts.

By: Alessandra Feller and Alessia Castelli

Category:Trademarks