Tag: Europe

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Implementation of the EU “Trademark Package” in France
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Zara v Zara: The evolving world of “fashion”
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Fashion & Food Industry Update: More Companies Adopting Blockchain Solutions
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Final Approval given to EU Copyright Directive
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Can the mere registration of company name infringe? In the case of BMW, yes!
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Court confirms additional tools for trade mark owners to protect their brand where they operate a selective distribution system in the EU
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Act on financial support for audiovisual production published in the Journal of Laws
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If the purple colour may not be subject to the effect of time, trade marks certainly are
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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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Descriptive Character and Geographical Origin: Bad News for the Souvenir Industry

Implementation of the EU “Trademark Package” in France

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.

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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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Fashion & Food Industry Update: More Companies Adopting Blockchain Solutions

While still an emerging technology, more companies are implementing blockchain technology to manage supply chains, track goods, prevent counterfeiting, increase security, and ensure traceability. In a recent survey of global leaders, by auditing and financial services company KPMG, 48% of respondents stated they believe it is highly likely that blockchain will change the way their companies do business over the next three years, and 41% stated their company intends to implement blockchain technology during the next three years.

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Final Approval given to EU Copyright Directive

On 27 March 2019, the European Parliament approved, with a vote of 348 to 274, the new Directive on Copyright in the Digital Single Market (the “DSM”) which will significantly tighten copyright on the internet.

While the new Directive has been hailed by record labels, artists and media companies as a move to fairly compensate artists, many tech firms like Google and Reddit, and internet activists argue that it will restrict and even destroy user-generated content, with Google stating that it would “harm Europe’s creative and digital industries.”

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Can the mere registration of company name infringe? In the case of BMW, yes!

On 12 February 2019, car manufacturer (and globally recognised car brand) BMW was granted summary judgment in its claims for passing-off and trade mark infringement against BMW Telecommunications Ltd and Benjamin Michael Whitehouse (the sole director of BMW Telecommunications Ltd). The respondents were a consultancy business providing services for railway signaling and telecommunications.

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Court confirms additional tools for trade mark owners to protect their brand where they operate a selective distribution system in the EU

A recent decision by the Court of Milan found that a trade mark owner who had consented to products being sold in the European Economic Area (EEA), but only through authorised retailers, could make a claim for trade mark infringement where the product was sold by an unauthorised retailer. This case highlights the effectiveness of implementing a selective distribution system for product manufacturers looking for new ways to protect their brand.

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Act on financial support for audiovisual production published in the Journal of Laws

An Act on financial support for audiovisual production was published in the Journal of Laws on 10 January 2019. The Polish Film Institute (PISF) will soon provide financial support for the production of audiovisual works created in Poland.

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If the purple colour may not be subject to the effect of time, trade marks certainly are

When it comes to non-traditional trade marks in the EU, the requirement of a clear and precise description can be quite complex to put into practice, as demonstrated in the recent UK Court of Appeal decision in Cadbury v The Comptroller General of Patents Designs and Trade Marks.

In 2013, in Cadbury v Nestle, the Court of Appeal held that the graphic representation and the description of the purple mark did not constitute a sign within section 1 of the Trade Marks Act but rather an attempt to register multiple signs with different permutations, presentations and appearances, which are neither graphically represented nor described with any precision.

As a result, Cadbury attempted to amend the (same) description of another of its colour marks, registered in 1998 and now at risk of invalidity as a consequence of the Cadbury v Nestle decision. However, both the Comptroller and the High Court denied Cadbury’s request to amend the mark description.

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

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.).

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