Tag: Europe

1
The descriptive character of the two-letter trademark “QD” (LG Electronics) – Ruling of the EU General Court in Case T-650/16
2
Ferrari “Testarossa” – The great importance for trademark owners of making proper use of trademarks
3
Judgment of the Supreme Administrative Court in the case of Dior v PPO (Poland)
4
An unsuccessful registration of the trademark “I’m organic” (Europe)
5
The Louboutin red sole – opinion of the Advocate General (case c-163/16 – recap)
6
The European trade mark reform – Phase 2
7
Significant changes ahead for Australian patents
8
Criminal trade mark offences to also apply to grey market goods in UK
9
Duty of examining a mark in the registration stage – judgement of the EU Court in the case of Indeutsch International, Case T-20/16
10
A favourable opinion for the owners of exclusive brands – Does selective distribution guarantee that the luxury image of a brand is maintained?

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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Judgment of the Supreme Administrative Court in the case of Dior v PPO (Poland)

On 4 August 2009, the company Interton sp. z o.o. (“Interton”) applied for the word-figurative trademark “A ADORATION” – goods from class 3 (cosmetics, including eye shadow, lash mascara, lipstick, fluids, makeup foundation, nail polish). The Polish Patent Office granted a protection to the mark (R-235773). Fast forward to 21 June 2017 (and after a number of oppositions and disagreements), the Supreme Administrative Court provided a ruling dismissing the PPO’s decision.

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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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The Louboutin red sole – opinion of the Advocate General (case c-163/16 – recap)

On 22 June 2017, Advocate General Maciej Szpunar presented an opinion in case C-163/16 concerning a trademark registered for the benefit of the well-known fashion designer Christian Louboutin, in the form of the colour red applied to the sole of a shoe.

In 2010, Louboutin obtained a registration of a Benelux trademark submitted for goods from class 25. This covered shoes (except for orthopaedic shoes), while in 2013, the registration was restricted to high-heeled shoes.

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The European trade mark reform – Phase 2

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.

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Significant changes ahead for Australian patents

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.

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

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).

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

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).

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