Tag: Europe

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Criminal trade mark offences to also apply to grey market goods in UK
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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
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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?
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Revolution in personal data protection: GDPR – new provisions, bigger penalties
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A dispute between renowned tire producers – Ruling of the EU Court of Justice in the case of the trademark “XKING”
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The protective capacity of 3D trademarks
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One fee per class system introduced in Polish trademark law
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Lack of distinctiveness as an obstacle for EUTM registration
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UK Appointed Person gives first decision in registered design appeal
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Distinctiveness of a mark (packaging of Knoppers waffles) – ruling of the EU Court of Justice

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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Revolution in personal data protection: GDPR – new provisions, bigger penalties

On 25 May 2018, the provisions of the general Regulation of the European Parliament and of the Council (EU) 2016/670 of 27 April 27 2016, on the protection of natural persons with regard to the processing of personal data and on the free movement of such data, and repealing Directive 95/46/EC (the General Data Protection Regulation (GDPR)) will enter into force. The changes are many.

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

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.

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One fee per class system introduced in Polish trademark law

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

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

UK Appointed Person gives first decision in registered design appeal

The first decision on an appeal to the Appointed Person under a new regime for designs has been issued. The appeal in this first case was against a decision by a hearing officer for the IPO to invalidate two registered designs consisting of a garment with a modified Union flag on the chest, in response to a request from a competitor of the rights owner.

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Distinctiveness of a mark (packaging of Knoppers waffles) – ruling of the EU Court of Justice

We reported previously, in Bulletin No. 2 /2016 (page 15), on a case of the registration of the graphic trademark (shown below, packaging for Knoppers waffles, without any additional markings, with protection only for the two-colored background) for goods from class 30 of the Nice Classification, namely confectionery products, chocolates, chocolate products, cakes, ice creams, and ingredients for manufacturing such products.

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