invalidity actions – IP Law Watch

Keep an Eye on Your Mailbox – Appoint a UK Representative for Trade Marks Filed Through WIPO

Oct 05 2022

A direct United Kingdom (UK) trade mark application to the UK Intellectual Property Office (UKIPO) contains a requirement to name a UK address for service. In contrast, it has been a standing practice of the UKIPO to process International Trade Mark Registrations via the Madrid Protocol designating the UK without requiring a UK service address. The UKIPO would only require to specify a UK service address in circumstances where objections or oppositions are raised in relation to the International Trade Mark Registrations during prosecution. However, the recent decision in MARCO POLO (O/681/22) has called this UKIPO’s practice into question.

Descriptive Character and Geographical Origin: Bad News for the Souvenir Industry

Oct 09 2018

If you are one of those intellectual property lawyers that likes to tell brand stories while travelling, this post is for you.

Last September, the European Court of Justice (ECJ) dismissed the appeal of the German Souvenir Federation (Bundesverband Souvenir), which had filed an invalidity action based on the descriptive character of the term “Neuschwanstein” (the name of a beautiful castle located in southwest Bavaria, Germany). The appellant argued that the mark may be used in trade to designate the geographical origin of the goods and services concerned (handbags, clothing, soft drinks, jewelry, etc.).

Tag:invalidity actions