Europe – Page 7 – IP Law Watch

We have a decision in the Sky v SkyKick case… and the long-awaited CJEU’s decision is good news for brand owners!

Jan 29 2020

On 29 January 2020 the Court of Justice of the European Union (CJEU) handed its decision in the referral from the English High Court in the Sky v SkyKick case. We have previously covered this case and its importance for EU and UK trade mark law (including with our summary of the opinion issued by Advocate General Tanchev, which can be seen here).

The CJEU’s ruling provides good news for trade mark owners as it largely maintains the status quo for EU and UK trade mark law, departing from the AG’s Opinion in a number of important ways.

Does AI generated work give rise to a copyright claim?

Dec 18 2019

The right to intellectual property protection in “Artificial Intelligence” generated work gives rise to numerous legal, economic and moral issues. “Artificial Intelligence” (AI) is a comprehensive term used to describe the ability of computer systems to perform tasks normally requiring human intelligence, ranging from translation processes and visual perception to brain simulation.

In this post, we give a brief introduction to the legal issues surrounding claims to copyright in AI generated work in the context of UK law and specifically, who can claim ownership of the work produced.

Ferrero successfully enforces the Tic Tac shape mark in Italy

Nov 26 2019

Many of us had a Tic Tac box in our pockets as kids, no matter the country we grew up in. Ferrero Spa (“Ferrero”), the Italian manufacturer of Tic Tac (and lots of other delicious confectionary products) registered the Tic Tac box as a trade mark in several jurisdictions, including Italy.

After succeeding before the CJEU in the invalidation action against BMB sp. z o.o. earlier this year (click here), in a recent case brought before the Italian courts, Ferrero successfully defended its shape marks, despite the invalidity claim brought by S.r.o. Mocca spol. (“Mocca”), a Czech company selling Bliki-branded mints in an identical container.

To 3D, or not to 3D, that is the question: Another twist in the Rubik’s Cube and its EU trade mark protection

Nov 13 2019

The long running and highly publicised Rubik’s cube case has taken another twist. On 24 October 2019, the EU General Court confirmed the cancellation of the EU trade mark for the 3D shape. The mark was cancelled because its essential characteristics were deemed necessary for its technical function (i.e. the shape’s ability to rotate).

Music to our ears: some clarity on joint authorship of copyright

Oct 29 2019

In the recent decision of the case Kogan v Martin, the UK Court of Appeal overturned an Intellectual Property Enterprise Court (IPEC) decision and identified a new test for determining when contribution is sufficient to be recognised as a joint author of a copyright work.

The case has now been remitted for a retrial before a different judge, due to the judge of first instance adopting an erroneous approach to the evidence and applying incorrect legal standards.

Sky v Skykick AG – is this the end of a claim for “computer software?”

Oct 21 2019

On 16 October 2019, Advocate General Tanchev of the CJEU has issued his opinion in Sky v SkyKick one of the most intriguing trade mark cases at the moment which will likely have a significant impact on EU trade mark law. Crucially the AG has advised that:

“registration of a trade mark for ‘computer software’ is unjustified and contrary to the public interest” because it confers on the proprietor a “monopoly of immense breadth which cannot be justified”, and it lacks sufficient clarity and precision; and
trade mark registrations made with no intention to use, in relation to the specified goods and services, may constitute bad faith.

UKIPO knocks undefeated Reds off their perch – The LIVERPOOL trade mark and lessons for brand owners

Oct 16 2019

To the interest of many a scouser and football fan alike, Liverpool Football Club’s attempt to register as a UK trademark LIVERPOOL has been rejected by the UKIPO on the grounds that the word is of “geographical significance” to the city. Liverpool FC had filed its application in regards to various goods in relation to football and the filing had attracted significant public attention.

Other English football clubs (Everton, Chelsea and Tottenham) have managed to register several trade marks for each of their respective area names. In addition Southampton Football Club has managed to register SOUTHAMPTON as an EU trade mark. As a result, it is not surprising that Liverpool FC would seek to register a similar mark to help protect its valuable brand.

However, as a result of the filing the club received significant backlash from the people of Liverpool, including their own supporters, and – probably in a related move – Liverpool FC has said that it does not plan to appeal the refusal and it has withdrawn the application. An additional trade mark application for LIVERPOOL with different claims has also been withdrawn.

The matter presents a great case study for brand owners on balancing the need to protect their brand whilst being considerate of the potential adverse PR that will come with the application for certain trade marks.

Trade mark re-filing and bad faith – Go directly to Jail. Do not pass GO, do not collect $200

Sep 11 2019

Hasbro Inc. (Hasbro), owner of the well-loved board game Monopoly, suffered a defeat on 22 July 2019, before the EUIPO Board of Appeal in relation to the MONOPOLY trade mark. The EU registration for the MONOPOLY trade mark was partially invalidated as it was found that Hasbro had acted in bad faith when filing the application as part of a ‘trade mark re-filing’ programme.

The Scotch Whisky Saga: Where Name and Reputation is not enough

Jul 29 2019

William Grant & Sons, the distiller, blender and owner of Glenfiddich, the independent whisky company which markets itself as the “World’s Most Awarded Single Malt Scotch Whisky”, was unsuccessful in its recent opposition of Glenfield’s label trade mark application.

Back in 2018, Mumbai-based business man Vivek Anasane filed a trade mark application for the label of his ‘Glenfield’ Scotch whisky in an attempt to expand his drinks company into the UK. This was quickly opposed by William Grant & Sons who argued that the Glenfield mark was “visually and phonetically highly similar” to the Glenfiddich word mark.

Producers of generic medicines and biosimilars even more supported by EU

Jul 18 2019

Effective 1 July 2019, the EU adopted a regulation by introducing a supplementary protection certificate (SPC) manufacturing and stockpiling waiver. This waiver also applies for biosimilar versions of SPC-protected medicine during the term of the SPC.

Tag:Europe