Tag: EUIPO

1
Registrability of Shape Marks and Technical Function of Complex Products: The Pirelli Case
2
“All Aboard” As Guerlain Departs From the Norm: The General Court of the EU Finds Distinctive Character in Boat Hull Shaped Lipstick Packaging
3
Trade Mark Re-filing and Bad Faith – Go Directly to Jail. Do Not Pass GO, Do Not Collect $200 – Part Two: General Court Ruling
4
Don’t Bank-sy on Trade marks: Banksy loses EU trade mark due to “bad faith”
5
Is it a bird? Is it a plane? No, it’s an infringement of a reputable mark!
6
COVID-19: EUIPO extends all office deadlines; CJEU restricts operations but time limits unchanged
7
To 3D, or not to 3D, that is the question: Another twist in the Rubik’s Cube and its EU trade mark protection
8
Trade mark re-filing and bad faith – Go directly to Jail. Do not pass GO, do not collect $200
9
Zara v Zara: The evolving world of “fashion”
10
Iceland’s trade mark nothing but a puddle

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

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.

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

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.

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Trade Mark Re-filing and Bad Faith – Go Directly to Jail. Do Not Pass GO, Do Not Collect $200 – Part Two: General Court Ruling

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).

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Don’t Bank-sy on Trade marks: Banksy loses EU trade mark due to “bad faith”

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.

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

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.

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

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.

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To 3D, or not to 3D, that is the question: Another twist in the Rubik’s Cube and its EU trade mark protection

The long running and highly publicised Rubik’s cube case has taken another twist. On 24 October 2019, the EU General Court confirmed the cancellation of the EU trade mark for the 3D shape. The mark was cancelled because its essential characteristics were deemed necessary for its technical function (i.e. the shape’s ability to rotate).

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Trade mark re-filing and bad faith – Go directly to Jail. Do not pass GO, do not collect $200

Hasbro Inc. (Hasbro), owner of the well-loved board game Monopoly, suffered a defeat on 22 July 2019, before the EUIPO Board of Appeal in relation to the MONOPOLY trade mark. The EU registration for the MONOPOLY trade mark was partially invalidated as it was found that Hasbro had acted in bad faith when filing the application as part of a ‘trade mark re-filing’ programme.

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Zara v Zara: The evolving world of “fashion”

The recent decision in Inditex v EUIPO demonstrates the far reaching, evolving nature of fashion brands and the markets they can operate in and are expanding into.

In this case, Inditex (one of the world’s largest fashion retailers and owner of the fashion brand Zara) appealed the EUIPO’s decision to grant registration of the ‘Zara Tanzania Adventures’ mark in classes 39 (travel and tourism) and 43 (travel agency services). The appeal was based on the registration of its own ‘Zara’ mark in class 39. But how can a fashion brand object to a mark in the travel sector?

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Iceland’s trade mark nothing but a puddle

After a challenge by the Icelandic government, the global supermarket chain Iceland has had its European Union trade mark invalidated. This decision comes merely five years after finally obtaining registration after a lengthy (12 years) application process in which the mark was opposed by a number of Icelandic companies.

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