Europe – Page 11 – IP Law Watch

The European trade mark reform – Phase 2

Oct 03 2017

On 1 October 2017, the second part of the European trade mark reform entered into force, completing the implementation of Regulation (EU) 2015/2424 amending the Community trade mark regulation (EUTMR).

Taking a step back, this is in fact the last part of a much longer reform process that began about 10 years after the adoption of the EU trade mark system in 1996. In 2008, the European Commission published the Communication on an industrial property rights strategy for Europe with the intent to review the current practice and bring the European trade mark system to the next level. Subsequently, in depth studies, a public consultation and an impact assessment followed until the approval, in December 2015, of a new amending Regulation and a Directive to harmonise the laws of Member States.

Significant changes ahead for Australian patents

Sep 07 2017

The Australian Government has proposed significant changes to Australian patent law following an inquiry into the IP system recently completed by its advisory body, the Productivity Commission. These include:

Amending the inventive step threshold to reflect that of the European Patent Office
Phasing out innovation patents
Requiring applicants to identify an invention’s technical features in their claims, and
Adding an objects clause to the Patents Act.

Criminal trade mark offences to also apply to grey market goods in UK

Sep 07 2017

In a positive decision for brand owners, the UK Supreme Court has confirmed that criminal trade mark offences can apply to the sale and distribution of grey market goods in addition to counterfeit goods.

In R v M & Ors [2017] UKSC 58, the appellants had been importing clothes and shoes into the EU that bore trade marks of famous fashion brands. These were a combination of counterfeit goods and grey market goods (i.e. goods that had been produced with the trade mark owner’s consent but that had been subsequently sold without their consent).

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

Aug 06 2017

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.

A favourable opinion for the owners of exclusive brands – Does selective distribution guarantee that the luxury image of a brand is maintained?

Aug 05 2017

On 26 July 2017, the advocate general of the EU Court of Justice issued a very interesting opinion of benefit to the owners of exclusive brands. The dispute the opinion addresses has been going on for many years between the companies Coty German GmbH (“Coty”) – a leading supplier of luxury cosmetic products in Germany – and Parfümerie Akzente GmbH (“Parfümerie Akzente”) – an authorized distributor of those products. It concerns the possibility of a supplier prohibiting authorized entities involved in further selling in a selective distribution system from using unauthorized third companies.

The EU Court of Justice will have to consider whether, and within what scope, selective distribution systems for luxury and prestige items that primarily ensure the “luxury image” of those goods constitute an element of competition pursuant to Article 101 par. 1 of the Treaty on the Functioning of the European Union (TFEU).

A dispute between renowned tire producers – Ruling of the EU Court of Justice in the case of the trademark “XKING”

Jul 30 2017

In a ruling of 26 July 2017 in case C-84/16 P, the Court of Justice upheld a ruling by the EU General Court invalidating a decision of the EUIPO Fourth Board of Appeal dismissing an opposition to the registration of the word-figurative trademark “XKING”.

That ruling benefits the company Compagnie générale des établissments Michelin (“Michelin”) – the entity that submitted the opposition to the registration in a proceeding before the EUIPO and is against the company Continental Reifen Deutschland GmbH (“Continental”), a market competitor of Michelin and the entity that applied for the registration of the contested mark.

The protective capacity of 3D trademarks

Jul 22 2017

One of the forms of a trademark more and more frequently encountered in trading is that of the shape mark. Read More

One fee per class system introduced in Polish trademark law

Jun 23 2017

Changes have been introduced in the system of fees for the submission and protection of trademarks and industrial designs with the Polish Patent Office (PPO). An amendment of the Regulation of the Council of Ministers on fees relating to the protection of inventions, utility designs, industrial designs, trademarks, geographic designations and topographies of integrated circuits was published and entered into force at the end of 2016.

To read the full alert, click here.

By: Michał Ziółkowski

Lack of distinctiveness as an obstacle for EUTM registration

Jun 21 2017

The distinctiveness of a trademark is one of the conditions for obtaining a European Union trade mark (EUTM) registration. The concept of a trademark is defined through the prism of distinctiveness as its inherent characteristic, and also its basic function. This distinctiveness may be inherent (due to the unprecedented and extraordinary structure or content of the sign) or acquired (as a result of use of the sign on the market). Distinctiveness should be possessed by each representable and sensory perceptible sign capable of distinguishing goods or services that should perform the functions of a trademark in business or trade.

To read the full alert, click here.

By: Michał Ziółkowski

Tag:Europe