Europe – Page 12 – IP Law Watch

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.

A favourable opinion for the owners of exclusive brands – Does selective distribution guarantee that the luxury image of a brand is maintained?

Aug 05 2017

On 26 July 2017, the advocate general of the EU Court of Justice issued a very interesting opinion of benefit to the owners of exclusive brands. The dispute the opinion addresses has been going on for many years between the companies Coty German GmbH (“Coty”) – a leading supplier of luxury cosmetic products in Germany – and Parfümerie Akzente GmbH (“Parfümerie Akzente”) – an authorized distributor of those products. It concerns the possibility of a supplier prohibiting authorized entities involved in further selling in a selective distribution system from using unauthorized third companies.

The EU Court of Justice will have to consider whether, and within what scope, selective distribution systems for luxury and prestige items that primarily ensure the “luxury image” of those goods constitute an element of competition pursuant to Article 101 par. 1 of the Treaty on the Functioning of the European Union (TFEU).

A dispute between renowned tire producers – Ruling of the EU Court of Justice in the case of the trademark “XKING”

Jul 30 2017

In a ruling of 26 July 2017 in case C-84/16 P, the Court of Justice upheld a ruling by the EU General Court invalidating a decision of the EUIPO Fourth Board of Appeal dismissing an opposition to the registration of the word-figurative trademark “XKING”.

That ruling benefits the company Compagnie générale des établissments Michelin (“Michelin”) – the entity that submitted the opposition to the registration in a proceeding before the EUIPO and is against the company Continental Reifen Deutschland GmbH (“Continental”), a market competitor of Michelin and the entity that applied for the registration of the contested mark.

The protective capacity of 3D trademarks

Jul 22 2017

One of the forms of a trademark more and more frequently encountered in trading is that of the shape mark. Read More

One fee per class system introduced in Polish trademark law

Jun 23 2017

Changes have been introduced in the system of fees for the submission and protection of trademarks and industrial designs with the Polish Patent Office (PPO). An amendment of the Regulation of the Council of Ministers on fees relating to the protection of inventions, utility designs, industrial designs, trademarks, geographic designations and topographies of integrated circuits was published and entered into force at the end of 2016.

To read the full alert, click here.

By: Michał Ziółkowski

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.

To read the full alert, click here.

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.

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.

Momentum.africa – Opening of Top-Level Domain Name to Create Opportunities to IP Right Owners

Apr 11 2017

The new generic top-level domain (gTLD) .africa, a regional domain for users located in and out of the continent, has been officially validated by ICANN.

More than a decade after its other regional counterparts, such as .eu or .asia, the .africa gTLD has been the subject matter of a legal conundrum for years.

Indeed, a conflict between two operators had to be escalated up to U.S. courts before a final decision entrusted the management of the gTLD to a South African company, ZA Central Registry NPC.

This new gTLD will allow the African continent to seize the full potential of the internet revolution, on a continent where the mobile connectivity is now allowing bypassing the expensive copper wire infrastructure development.

The new .africa domain name extension is expected to lead the continent in its global effort to take part in the global information society and become a strategic place to invest.

Accessibility to the new domain name will be gradual: starting on 6 April 2017, a 60-day preliminary phase will allow trademark owners or companies to benefit from a priority right, as well as African countries that intend to protect certain emblematic names such as “Mount Kilimanjaro”. Then, starting on 2 June 2017, an Early Access Phase (EAP) will take place to prevent any hindrance or ransoming by ill-intentioned people.

The .africa TLD will finally be open to all on 4 July 2017, on a first-come/first-serve basis.

K&L Gates has more than 225 lawyers, including approximately 100 registered patent lawyers, agents, and technology specialists with technical or advanced science degrees – nearly 20 with Ph.D.s – who devote their practices to helping clients establish, enforce, and leverage their intellectual property rights worldwide.

We can thus highlight the pitfall to avoid, the topics on which to focus the attention and better defend and protect our clients’ intangible assets with regard to the opening of this new gTLD, on this emerging market.

By: Claude Armingaud, Alexandre Balducci and Solenn Le Guen

Tag:Europe