Tag: EUIPO

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Trade mark re-filing and bad faith – Go directly to Jail. Do not pass GO, do not collect $200
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Zara v Zara: The evolving world of “fashion”
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Iceland’s trade mark nothing but a puddle
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Supermac takes a bite out of McDonald’s as it loses the BIG MAC trade mark in the European Union
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EU case recap: Sprinter vs Diesel SpA “D” Marks (Case T‑521/15)
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EU: The obligation to translate in a motion for invalidation (Mediaexpert v EUIPO)
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The descriptive character of the two-letter trademark “QD” (LG Electronics) – Ruling of the EU General Court in Case T-650/16
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Ferrari “Testarossa” – The great importance for trademark owners of making proper use of trademarks
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An unsuccessful registration of the trademark “I’m organic” (Europe)
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Duty of examining a mark in the registration stage – judgement of the EU Court in the case of Indeutsch International, Case T-20/16

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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Supermac takes a bite out of McDonald’s as it loses the BIG MAC trade mark in the European Union

Although it may be one of the most famous burgers in the world, on 15 January 2019, Supermac’s (Holdings) Ltd was successful in seeking the cancellation of McDonald’s International Property Company Ltd (McDonald’s) EU trade mark registration for BIG MAC for burgers or restaurants.

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EU case recap: Sprinter vs Diesel SpA “D” Marks (Case T‑521/15)

On 20 June 2017, a ruling between Sprinter megacentros del deporte SL and Diesel SpA was made regarding similar trademarks indicating there would be a risk of consumers being misled in relation to two similar figurative marks in the form of the letter “D” in respect of identical goods. A consumer would have to examine the marks very closely, which is unlikely since the average consumer seldom has the opportunity to compare trademarks side by side.

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EU: The obligation to translate in a motion for invalidation (Mediaexpert v EUIPO)

On 20 March 2013, the company Mediaexpert S.A. submitted the following word-figurative EU trademark to the EUIPO:

for the following services in classes 35, 39 and 41:

  • 35: Business management; business administration;
  • 39: Transport; packaging and storing of goods;
  • 41: Education; providing training; sports;

and the trademark was registered on 5 March 2014 under number 11674132 for all the services submitted.

On 22 May 2014, the company Mediaexpert sp. z o.o. applied for invalidation of the mark, citing an earlier protection right to a domestic, word-figurative trademark registered on 26 February 2010 under number R.226812 in the form:

for goods and services from classes 7, 9, 11, 12, 16, 20, 35, 39, 41 and 42.

Together with the motion for invalidation, the applicant attached a printout from the Polish Patent Office database and a list of goods and services in the Polish language, without a translation into English, which was the language of the proceeding for invalidation.

Fast forward to a ruling of 20 July 2017, the court dismissed the complaint by the applicant, that there had been a breach of the principle of the protection of justified expectations, and ordered the applicant to pay the costs of the proceedings.

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The descriptive character of the two-letter trademark “QD” (LG Electronics) – Ruling of the EU General Court in Case T-650/16

On 12 January 2015, the company LG Electronics Inc. submitted the mark “QD” to the EUIPO. The application was made for: “television receivers; mobile phone; smartphones; tablet computers; computers; sound recording devices; image recording devices; sound transmission devices; image transmission devices; sound playback devices; image reproduction devices; software; software for interactive television; communications software; computer software” belonging to class 9 of the Nice Classification.

In a decision of 19 August 2015, the application for registration of the mark was dismissed in relation to all goods, on the basis of Article 7 par. 1b) and c) of Regulation No. 207/2009 due to the absence of any distinctiveness of the sign and given that the mark consists solely of a descriptive element in relation to the goods for which it was submitted.

LG Electronics Inc. disagreed with that decision and lodged an appeal with the EUIPO on 9 October 2015. Subsequently, in a decision of 24 May 2016, the Board of Appeal of the EUIPO dismissed the appeal, ruling that the word mark “QD” is descriptive for the goods the submission referred to.

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Ferrari “Testarossa” – The great importance for trademark owners of making proper use of trademarks

The Düsseldorf first instance district court decided that the trademark of Ferrari has to be cancelled (Decision as of 2 August 2017 – Case no. 2a O 166/16 – juris). However, the decision in not yet final.

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An unsuccessful registration of the trademark “I’m organic” (Europe)

In 2016 Zbyszko Bojanowicz sp. z o.o. S.K.A. applied to the EUIPO to have the word-figurative mark “I’m organic” registered for goods and services from classes 16, 32 and 42 of the Nice Classification.

The EUIPO found that, in this case, conditions under Article 7 par. 1 b) and c) of Regulation No. 207/2009 of 26 February 2009 on the Community trademark existed for which the submission of a word-figurative trademark must be rejected.

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Duty of examining a mark in the registration stage – judgement of the EU Court in the case of Indeutsch International, Case T-20/16

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.

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