European Union – IP Law Watch

No Point Crying Over Spilled “Not Milk” – Distinctiveness Issues For Trade Marks In The Plant-Based Food Industry

Jun 03 2024

The plant-based food industry is growing at a rapid pace, with popularity amongst consumers increasing because of its purported health and environmental benefits. However, a recent General Court decision in the EU highlights the difficulties brands face in obtaining trade mark protection for plant-based food if brands are not sufficiently distinctive (despite a tendency in the industry to develop brands which are a play on words of traditional food products).

Upcoming UKIPO Representation Changes – The Effects of Brexit Continue

Nov 14 2023

One of the effects of Brexit was that the UK introduced a requirement for a UK based representative for all UK national trade marks, patents and designs and international registrations designating the UK in January 2021. However, there was a grace period for comparable trade marks or re-registered designs deriving from an EU national trade mark or international registration designating the EU.

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 NFT Collection: A Brave NFT World – A Regulatory Review of NFT’s (Part 2)

Jun 30 2022

In a recent alert, we painted the big NFT picture, highlighting what a non-fungible token (NFT) means and the opportunities they present (see here). In this second part of the NFT series, we will take a deeper look at local regulatory control (or lack thereof) in this uncharted territory.

French Reform of Automatic Intellectual Property Assignment for Non-Employee Personnel

Jan 10 2022

France is widely known for its author-centric intellectual property right (IPR) framework: except for a limited number of very specific situations, all IPR must be expressly assigned and there is no “work for hire” doctrine.

This situation is changing, further to Decree n°2021-1658 dated 15 December 2021, replicating the regime applicable to inventions and software created by employees or public servants to those made by natural persons accommodated by private or public law entities carrying out research.

This decree amended the French Intellectual Property Code (FIPC), by creating two new articles: L.113-9-1 (with regard to software IPR) and L.611-7-1 (with regard to patent IPR) FIPC.

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.

Producers of generic medicines and biosimilars even more supported by EU

Jul 18 2019

Effective 1 July 2019, the EU adopted a regulation by introducing a supplementary protection certificate (SPC) manufacturing and stockpiling waiver. This waiver also applies for biosimilar versions of SPC-protected medicine during the term of the SPC.

“Three stripes and you’re out!” – The EU General Court rules Adidas’ three stripe trade mark invalid

Jun 20 2019

On 19 June 2019, the EU General decided a case about the validity of Adidas’ EU trade mark registration for three stripes. In the General Court’s decision (see here), the Court upheld the invalidity of the mark on the basis that: (i) the mark wasn’t used consistently and evidence of reversed/amended versions of the mark was inadmissible; and (ii) Adidas failed to show acquired distinctiveness across the EU, providing admissible evidence for only five EU Member States.

A figurative mark? A position mark? Or just a trade mark?

Jun 20 2019

The Court of Justice of the European Union (CJEU) recently confirmed that when assessing the actual use of a mark and the scope of protection afforded by a trade mark, the defining factor is the way in which it is perceived, and it is irrelevant that it is classified as a figurative or a position mark. In the CJEU’s decision in ECLI:EU:C:2019:471, the CJEU rejected German shoemaker Deichmann’s appeal to have Spanish competitor Munich SL’s trade mark revoked. The case revolves around the registered mark below, depicting a solid line cross on the side of a dotted outline of a shoe.

Implementation of the EU “Trademark Package” in France

May 29 2019

Further to the adoption of the so-called Trademark Package at European level, comprised of Regulation no.2015/2424 (as codified by Regulation no.2017/1001 dated 14 June 2017) on EU Trademarks (the “Regulation”) and Directive no.2015/2436, harmonizing Member States’ trademark regime (the “Directive”), both dated 16 December 2015, France was due to update its internal regulatory framework.

The PACTE Act no. 2019-486, adopted on 22 May 2019, implemented the Trademark Package at long last. While the Regulation addressed EU aspects and is of direct enforcement within Member States, the Directive provided Member States with some leverage on the internal implementation.

These new aspects aim at simplifying the enforcement of intellectual property rights (“IPR”), for both trademarks and the patents, by creating administrative procedures, rather than having to introduce a judicial action before the courts.

Tag:European Union