distinctive character – IP Law Watch

Nothing more than Empty Words: The Difficulty with Registering Slogans as Trade Marks in the EU

Apr 25 2023

Companies continue to face difficulties in achieving EU trade mark protection for their slogans. In separate recent decisions of the EU General Court, two trade mark applications relating to advertising slogans were rejected on the grounds that the marks lacked the ‘distinctive character’ required to be registerable under Article 7(1)(b) of Regulation 2017/1001. These two decisions join a long list of case law rejecting similar applications.

Dior Did Not SADDLE on Distinctive Character of Its Iconic Bag

Nov 17 2022

Another unfavourable decision on non-traditional trade marks has landed, now in relation to Dior’s iconic Saddle bag. The EUIPO’s Second Board of Appeal decided that Dior’s Saddle bag is not distinctive with respect to handbags. The decision is seen as surprising yet not unpredictable, given the recent history of unsuccessful trade mark applications for 3D signs (for example, see our previous article on the Moon Boot case here).

Feb 21 2022

The General Court of the European Union (EGC) handed down its decision on the invalidity proceeding brought against the well-known Moon Boot 3-D trade mark registration. The GC took a close look into the distinctiveness of 3D signs, providing new guidance on the subject.

How distinctive can a chocolate bar be? After Kit Kat, now it’s Toblerone’s turn

Aug 28 2017

In newly issued court proceedings, the makers of Toblerone have become the latest confectionary manufacturers to seek to protect the shape of their product via 3D trade mark registrations. Following the recent difficulties Nestlé faced in registering the shape of their Kit-Kat bar, Mondelez have commenced proceedings against Poundland in relation to their newly announced Twin Peaks bar. Twin Peaks bears more than a passing resemblance to a Toblerone, except that each chunk of chocolate features two peaks rather than one.

Duty of examining a mark in the registration stage – judgement of the EU Court in the case of Indeutsch International, Case T-20/16

Aug 06 2017

On 15 February 2010, the company M/S. Indeutsch International (Applicant) filed figurative EU trademark:

for “knitting needles” and “crochet hooks” belonging to the 26th class of the Nice Classification. EUIPO registered the aforementioned mark, however an application for declaration of invalidity of the trademark in question was filed on the basis of the lack of distinctive character of the registered sign.

Vademecum on the Assessment of the Likelihood of Confusion Between Trademarks

Jun 21 2016

Italian Supreme Court Outlines Criteria to Conduct a Proper Likelihood of Confusion Test

On 27 May 2016, the Italian Supreme Court released a judgement recalling with clarity and completeness most of the consolidated principles concerning the assessment of the likelihood of confusion between trademarks. This judgement is to become a good instrument for professionals when addressing to the topic at issue as well as a reference for future decisions of the Courts of merit.

Tag:distinctive character

Nothing more than Empty Words: The Difficulty with Registering Slogans as Trade Marks in the EU

Dior Did Not SADDLE on Distinctive Character of Its Iconic Bag

Does Reputation Ensure Distinctive Character of a Trade Mark? Not Necessarily

How distinctive can a chocolate bar be? After Kit Kat, now it’s Toblerone’s turn

Duty of examining a mark in the registration stage – judgement of the EU Court in the case of Indeutsch International, Case T-20/16

Vademecum on the Assessment of the Likelihood of Confusion Between Trademarks