EUIPO – IP Law Watch

Some (General Court) Decisions Put a SMILE on Your Face

Feb 20 2023

We are used to decisions about non-traditional trade marks not deserving protection in the European Union, leading to the inevitable conclusion that non-traditional trade marks can be difficult to register and keep on the register.

The recent McCain decision of the EU General Court seems to go into the opposite direction, providing some guidance on which proof of use will be sufficient for a non-traditional trade mark to stay on the EU register (see here).

The ‘Standard’ of Use Evidence in the EU – Advertising and Promotion Can be Enough to Show Genuine Use of a Service Without That Service Actually Crossing the Pond

Dec 21 2022

Does evidence showing booking, advertising and selling services in the EU constitute genuine use if the service actually registered takes place abroad?

This was the question contemplated by a recent decision of the General Court. The case T-768/20 (Standard International Management LLC v EUIPO) addresses the use of trade marks in the EU where the relevant brand operates hotel and leisure facilities outside the jurisdiction.

The New Digital Frontiers: How IP is Adapting to Virtual Worlds, from NFTs to Virtual Products

Aug 25 2022

Virtual products, the metaverse, and non-fungible tokens (NFTs) have recently been expanding and receiving considerable attention from investors, the general public; as well as the art world. Within the span of a year, NFT-backed virtual works of art have been reaching new height, from Beeple, Everydays: The First 5000 Days (March 2021 – US$69.3 million) to The Merge (December 2021 – US$91.8 million). Today, the most valuable living artist in history is a virtual work of art author (Pak, author of The Merge).

EUIPO 2 : AC Milan 0 – AC Milan Fails to Register Its New Club Crest in the EU

Dec 08 2021

AC Milan is one of Europe’s most decorated football clubs with seven European Cup/Champions League titles and 18 Serie A (Italian league) titles. However the Rossoneri, as the club is affectionately known, recently came up against an unfamiliar opponent in an unfamiliar field of play, being in the General Court of the European Union (the General Court), following their attempts to register their club crest as a trade mark.

Registrability of Shape Marks and Technical Function of Complex Products: The Pirelli Case

Aug 02 2021

The CJEU has rendered its decision on the invalidity actions brought by Yokohama against the below shape mark filed by Pirelli. The mark represents a single groove of a tyre tread, covering “tyres, solid, semi-pneumatic and pneumatic tyres, rims and covers for vehicle wheels of all kinds, vehicle wheels of all kinds, inner tubes, wheel rims, parts, accessories and spare parts for vehicle wheels of all kinds“ in class 12.

“All Aboard” As Guerlain Departs From the Norm: The General Court of the EU Finds Distinctive Character in Boat Hull Shaped Lipstick Packaging

Jul 14 2021

In what will be welcomed by innovative design brands, on 14 July 2021, the General Court of the EU handed down a decision annulling the EUIPO and Board of Appeal’s decisions that a mark filed by Guerlain lacked distinctive character. This decision emphasises that a distinctiveness assessment of a three-dimensional mark must be undertaken by reference to the specifics of common practice in the market for the relevant products.

Apr 30 2021

On 21 April 2021, the General Court of the European Union refused Hasbro’s appeal to overturn a decision that partially invalidated its EU trade mark for MONOPOLY on the ground of acting in bad faith when filing the application. The judgement by the General Court has ramifications for brand owners in both the law of bad faith but also in the practice of evergreening (repeatedly filing for an identical mark covering a broad specification of classes as the period of protection for the mark draws to an end).

Sep 22 2020

Banksy’s trade mark for one of his most famous artistic designs has been declared invalid by the European Union Intellectual Property Office (the “EUIPO”) on the grounds that it was filed in bad faith. The EUIPO finding him having engaged in “inconsistent with honest practices” in his attempt to protect his trade mark. A full copy of the decision can be found here.

The EUIPO said Banksy was attempting to use trade mark law to protect his artwork from being used commercially by third-parties because he couldn’t copyright it and maintain his anonymity. This decision highlights that the court will take a dim view of anyone – even famous artists – attempting to find a loophole in the law.

Is it a bird? Is it a plane? No, it’s an infringement of a reputable mark!

Apr 26 2020

The EUIPO recently upheld an opposition by DC Comics to protect its reputable SUPERMAN mark from a similar sign, despite the applicant’s sign covering a different class of goods. The decision confirms that, for there to be a sufficient risk of injury under Article 8(5) EUTRM, the public must perceive a ‘link’ between the sign and the earlier mark. The mere fact the two marks cover different classes of goods and services is not inherently a barrier to such a link. Here the link arose largely from the earlier mark’s reputation, and commercial connections between the two classes in question.

Some will see the EUIPO as swooping to the rescue to protect the hard-earned reputations of brands; others will see this as an unreasonable expansion of rights beyond a mark’s designated classes, and a Kryptonite to legitimate activity.

COVID-19: EUIPO extends all office deadlines; CJEU restricts operations but time limits unchanged

Mar 17 2020

With the global impact of the COVID-19 pandemic being seen in all facets of our lives, European IP registries are also seeking to manage these exceptional circumstances.

On Monday 16 March 2020, the Executive Director of the EUIPO issued a decision extending all time limits for EU trade marks and designs expiring between 9 March 2020 and 30 April 2020, that affect all parties before the Office, to 1 May 2020. Similarly, the EPO has announced that all deadlines for patent matters are extended until 17 April 2020.

Tag:EUIPO