Tag: Europe

1
New OHIM Registry Practice for Community Trade Marks
2
EU Data Protection Regulation
3
European Union Trade Mark Law Reform – Revised Drafts Released
4
ASA and CAP Publish Annual Report 2014
5
The Protection of ‘Weak’ Trademarks Having Acquired Secondary Meaning
6
The Chinese Translation of a Registered Word Trademark can be Used as a New Figurative Trademark in Italy
7
Yahoo! Vs. Reti Televisive Italiane S.p.a: A Turning Point in ISP’s Liability in Italy?
8
Roger Maier and Assos of Switzerland SA v ASOS plc and ASOS.com Limited
9
International Design Update
10
Do not use Audrey Hepburn’s Iconic Elements

New OHIM Registry Practice for Community Trade Marks

Nice Class Headings

If your international brand portfolio includes Community trade marks (CTMs) which were filed prior to 22 June 2012, you should be carefully reviewing your portfolio in light of changes expected to come into force under the draft Community Trade Mark Regulation (Regulation), a revised draft of which was released last week.

International brand owners will be familiar with the classification system under the Nice Agreement concerning the International Classification of Goods and Services. The system consists of 34 classes of goods and 11 classes of services, explanatory notes and an alphabetical list of goods and services. The class headings provide a general indication of the fields to which the goods and services in each class belong.

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EU Data Protection Regulation

On 15 June 2015 the European Council published its final proposed text for the new General Data Protection Regulation.  The Regulation is being adopted to provide legal certainty and transparency for businesses and to provide individuals with the same level of rights and obligations in all EU Member States.

To read the full alert, click here.

European Union Trade Mark Law Reform – Revised Drafts Released

On 8 June 2015, the Council of the European Union published the final texts of its proposal to amend the Community Trade Mark Regulation (Regulation) and Trade Mark Directive (Directive).

The revised drafts reflect the key issues which have been the subject of significant debate in the last year, including:

  • harmonisation of trade mark law and practice between EU member states
  • measures to protect brand owners’ rights with respect to counterfeit goods in transit
  • cooperation between Office for Harmonization in the Internal Market (OHIM) and national trade mark offices
  • governance and finances of OHIM.

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ASA and CAP Publish Annual Report 2014

‘Make Every UK Ad a Responsible Ad’

On 27 May, the Advertising Standards Agency (ASA) and the Committee for Advertising Practice (CAP) published their Annual Report for 2014. The Annual Report emphasises the ASA and CAP’s continuing work to implement the strategy unveiled during 2014. This strategy aims to ‘make every UK ad a responsible ad’ through the following five strands:

  • Understanding
  • Support
  • Impact
  • Proactive
  • Awareness

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The Protection of ‘Weak’ Trademarks Having Acquired Secondary Meaning

On February 2, 2015, (judgment no. 1861) the Italian Supreme Court ruled on a case involving two Italian companies active in the sector of furniture: Natuzzi S.p.A., owner of the Italian and European trademark ‘Divani & Divani’ (Trademark 1), and Divini & Divani S.r.l. (Divini & Divani), which started to use the trademark ‘Divini & Divani’ (Trademark 2).

Natuzzi claimed that the use of Trademark 2 was illegitimate, constituted an act of unfair competition as well as trademark infringement claiming the use generated confusion amongst customers. In particular, Natuzzi stated that, even if Trademark 1 was composed by two common words (literally in English ‘Sofas & Sofas’), it acquired specific distinctiveness. Consequently, Natuzzi sought to prevent Divini & Divani from using Trademark 2 as a company name and a trademark for its products. Divini & Divani counterclaimed that Natuzzi’s requests were groundless because there could not be any confusion between the trademarks and, in any case, Trademark 1 was weak and consequently, not worthy of protection.

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The Chinese Translation of a Registered Word Trademark can be Used as a New Figurative Trademark in Italy

On January 9, 2015, a decision of the Italian Patent and Trademark Office (Ufficio Italiano Brevetti e Marchi, hereafter ‘UIBM’) rejected an opposition made by Jaguar Land Rover Limited (Land Rover), in order to prevent the registration, in Italy, by China Depend Limited (China Depend) of a figurative trademark. The trademark was formed by two Chinese ideograms corresponding to the sign used in China by Land Rover to identify its activity, which once translated means ‘land’ and ‘tiger’, but allegedly commonly translated into ‘Land Rover’ ( Ideogram Trademark).

Land Rover, owner of the two Italian word trademarks ‘Land Rover’ and ‘Range Rover’ (Land Rover Trademarks), filed an opposition pursuant to Article 12, paragraph 1, letter d) of the Italian Intellectual Property Code setting forth the likelihood of confusion between similar trademarks. In particular, the provision provides that signs cannot be registered as trademarks if, at the date of the registration filing, they are similar or identical to other trademarks previously registered by third parties in the same country or are enjoying protection in the same country.

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Yahoo! Vs. Reti Televisive Italiane S.p.a: A Turning Point in ISP’s Liability in Italy?

On January 7, 2015 the Court of Appeal of Milan (Court of Appeal) rendered a relevant judgment on a dispute involving Yahoo! Italia S.r.l and Yahoo! Inc. vs. Reti Televisive Italiane S.p.A. (RTI), one of Italy’s major broadcasters. RTI sued Yahoo! Italia S.r.l. and Yahoo! Inc. (Yahoo!) because of the reproduction of RTI’s copyrighted videos on the Yahoo! Video-sharing platform (Yahoo! Video Italia). RTI requested the removal of such videos and the implementation by Yahoo! of a filtering and blocking system in order to detect and prevent any infringement of copyright. The Court of Appeal concluded that the hosting provider is only exclusively responsible if it takes active part in the uploading activity or is aware of the unlawful content or use of the material and does not erase them.

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Roger Maier and Assos of Switzerland SA v ASOS plc and ASOS.com Limited

In a long-anticipated decision, the Court of Appeal of England and Wales (Court of Appeal) on Wednesday held, by 2-1 majority, that use of the ASOS brand by the popular online clothing retailer was defensible under the ‘own name’ defence in Community trade mark law.

The decision, which reversed the findings of the judge at first instance, will be appealed to the Supreme Court (the highest court in England and Wales) by the Claimants, who own the successful ASSOS cycling clothing business and are the proprietors of a Community trade mark for the ASSOS word mark, which has been registered since 2005. 

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International Design Update

New Members to the Hague System

The Hague Agreement concerning the International Deposit of Industrial Designs (Hague System) is administered by World Intellectual Property Organization (WIPO) and has been around for almost 100 years. It is a mechanism, similar to the Madrid Protocol System for trade marks, of registering an industrial design in several countries by means of a single application, filed in one language and with one set of fees. The Hague System produces the same effect of a grant of protection in each of the designated contracting countries as if the design had been registered directly with each national office, unless protection is refused by the national office.

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Do not use Audrey Hepburn’s Iconic Elements

That’s what the Court of Milan has stated on January 21, 2015 (judgment no.766/2015)!

This dispute originated with the use by an Italian company, Caleffi S.p.A. (Caleffi), of an image recalling the famous scene from ‘Breakfast at Tiffany’s’ in which the actress, well-dressed in black, wearing sunglasses and pearls, was staring into the window of Tiffany’s Fifth Avenue boutique. Caleffi was promoting the prize contest ‘The dream diamond’. Audrey Hepburn’s heirs sued Caleffi and brought before the Court of Milan (Court) an action for damages based on the claimed violation of article 10 of the Italian Civil Code, on the use of the images of a person, and article 96 of Italian Copyright Law, on the protection of portraits.\

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