Nothing more than Empty Words: The Difficulty with Registering Slogans as Trade Marks in the EU
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Technical Effect Embodied in Technical Teaching
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H2 Production: A Shift Towards Electrolysis
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Why CMA, What Large Teeth you (Could) Have! Take Care to Heed the ASA and CMA’s Warnings Against Misleading Advertising
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CJEU Paves the way for Red-Soled Heels to Widen the Scope of Liability of E-Commerce Platforms
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Some (General Court) Decisions Put a SMILE on Your Face
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Global Trends in Hydrogen IP Protection
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The Battle of the Supermarkets Vol. 2 – GINgle Bells, GINgle Bells, GIN All the Way
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Trademark Applications and Infringements in Germany: The Importance of Potential Revocation and Non-Use
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The ‘Standard’ of Use Evidence in the EU – Advertising and Promotion Can be Enough to Show Genuine Use of a Service Without That Service Actually Crossing the Pond
Companies continue to face difficulties in achieving EU trade mark protection for their slogans. In separate recent decisions of the EU General Court, two trade mark applications relating to advertising slogans were rejected on the grounds that the marks lacked the ‘distinctive character’ required to be registerable under Article 7(1)(b) of Regulation 2017/1001. These two decisions join a long list of case law rejecting similar applications.
European Patent Office: Enlarged Board of Appeal decision G2/21
The Enlarged Board of Appeal EBoA is the highest judicial authority under the European Patent Convention. It handles patent examination for about 37 member states including the EU. The EBoA has recently published its decision G2/21 dealing with the principle of free evaluation of evidence in the context of inventive step. This decision is relevant for patents in the pharma, biotech and life science field.
Hydrogen production technology, according to the joint EPO-IEA report summarizing patent trends in the hydrogen economy (summarized here), accounts for the largest percentage of patenting activity since 2011 among the three primary stages of the hydrogen value chain (i.e., (i) production, (ii) storage, distribution, and transformation, and (iii) end-use industrial applications). Trends show a shift in hydrogen production from carbon-intensive methods to technologies that do not rely on fossil fuels. The bulk of recent increased patent activity is directed to electrolysis development, while patent activity related to production from biomass and waste has decreased.
In the UK, we have seen an increase in regulator activism, and particularly, in relation to advertising misleading consumers. This can be seen in the recent spate of the UK Competition and Markets Authority (“CMA”) investigations and a whole host of the UK Advertising Standards Authority (“ASA”) decisions. Companies will need to take extra care as the CMA may get some (very large) new teeth from the Digital Markets, Competition and Consumer Bill (“Bill”).
A recent preliminary ruling by the Court of Justice of the European Union (“CJEU”) in the joint cases (C-148/21 and C-184/21) between a luxury fashion brand known for its signature red-soled heels Christian Louboutin and an e-commerce giant Amazon might mark a start of an era of increased accountability of marketplaces in relation to listings of third parties they accommodate on their platforms.
We are used to decisions about non-traditional trade marks not deserving protection in the European Union, leading to the inevitable conclusion that non-traditional trade marks can be difficult to register and keep on the register.
The recent McCain decision of the EU General Court seems to go into the opposite direction, providing some guidance on which proof of use will be sufficient for a non-traditional trade mark to stay on the EU register (see here).
The European Patent Office (EPO) and the International Energy Agency (IEA) recently published a joint report summarizing innovation and patent trends within the hydrogen economy.1 The report is based on global patent activity since 20012 and is intended to help governments and businesses understand which parts of the hydrogen value chain appear to be making progress and which parts may be lagging behind.3 The report dives deep into specific technologies, lists the most active applicants in select technologies, and attempts to identify the impact of different governmental programs in specific sectors, with a goal of trying to help focus future innovation efforts.
It is beGINning to look a lot like a legal disputes saga between supermarkets in the UK. We have recently covered an ongoing dispute between Lidl and Tesco (see here), which relates to an alleged trade mark infringement. This time, Marks & Spencer (M&S) are suing the largest Europe’s discount grocery chain Aldi for copying their registered designs of the light-up Christmas gin bottles. This is the second legal case in recent times brought by M&S against Aldi, with the first one involving the famous Colin the Caterpillar cake, which has since been settled. Notably, the case at hand in relation to gin bottles demonstrates the benefits of registering designs in the UK, especially if such design is unique and has a significant value to the brand, and the brand would like to protect it against any copycats.
Hamburg, Germany – Not only known for its famous seafood and the third largest European seaport for goods and cargo handling1, but also a considerable and noteworthy jurisdiction when it comes to the protection and enforcement of trade mark rights in preliminary proceedings.
The Higher Regional Court of Hamburg found in a recent trade mark dispute in preliminary injunction proceedings (Decision of 29 September 2022 – 5 U 91/21) between the “Deutsche Telekom” (“Claimant”) and the Spanish telecommunication company “Telefónica” and its German subsidiary (together “Defendants”), that the application and use of a “T” consisting of five dots in combination with various Telefónica company symbols (e.g. shown below left and middle) (“Contested Signs”) constitute an infringement of the well-known “T-brand” (shown below right) (EUTM 215194 ; DE 39529531) of Deutsche Telekom (“T-Trade Mark”).
Telefónica company symbol (Contested Sign (1))
Telefónica company symbol (Contested Sign (2))
Deutsche Telekom “T-Trade Mark”
The Court found that there was a likelihood of confusion between the opposing signs, confirmed that the “T”-brand has a reputation within the meaning of Art. 9 (2) lit. c) of the EU Trade Mark Regulation (Regulation (EU) 2017/1001), and therefore concluded that the defendant’s trade mark infringes the claimant’s trade mark rights resulting in the grant of a preliminary injunction (“PI”).
Does evidence showing booking, advertising and selling services in the EU constitute genuine use if the service actually registered takes place abroad?
This was the question contemplated by a recent decision of the General Court. The case T-768/20 (Standard International Management LLC v EUIPO) addresses the use of trade marks in the EU where the relevant brand operates hotel and leisure facilities outside the jurisdiction.
