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Tag Archives: EUIPO

EUIPO’s “new” types of marks in practice: Any takers?

Since 2016, European trademark law has gone through its most substantial reform since the implementation of the (former) Community trademark system in 1996. One of the changes that took effect as of 1 October 2017 opened up the opportunity for trademark owners to obtain protection for new types of marks as these no longer require

UPDATE: UK Government comments on Draft EU Withdrawal Agreement

On 19 March the EU and the UK agreed the terms of a Brexit transition period ending on 31 December 2020. An updated colour-coded version of the EU’s Draft Withdrawal Agreement was published by the negotiators indicating which articles are provisionally agreed (highlighted in green), agreed from a policy perspective but subject to the drafting

adidas victorious again in defending its rights to the Three Stripes

The General Court has once again upheld adidas’ oppositions against two copycat applications for two stripes positioned on a shoe. The two decisions issued on 1 March 2018 (in Cases T-629/16 and T-85/16) come as part of the long-standing trade mark dispute between adidas and Shoe Branding*. The cases involved Shoe Branding’s two applications for

Europe – General Court: Bad faith’s link to likelihood of confusion

(Case analysis: T-687/16 – Koton Mağazacilik Tekstil Sanayi ve Ticaret AŞ v EUIPO / Joaquín Nadal Esteban) Successfully proving bad faith in a cancellation action can be a challenge. An additional hurdle can arise if the mark allegedly applied for in bad faith covers dissimilar goods or services. The General Court (GC) confirmed that bad faith must

Starbucks rocks for first time in Luxembourg

Judgment of the General Court, 16 January 2018 in case T-398/16, Starbucks Corp. vs EUIPO* In 2014, Starbucks opposed the below EUTM application seeking protection for “services for providing drinks“, services for which Starbucks is famous throughout the EU.   Starbucks relied both on the existence of a likelihood of confusion (Article 8(1)(b) EUTMR) and the fact that

Europe – General Court: EUTM revocation action takes the biscuit

(Judgments of 23 October 2017 in Cases T-404/16 and T-418/16 – Galletas Gullón SA (Gullón) v EUIPO) The General Court has recently overturned two EUIPO Board of Appeal decisions which deemed Gullón’s marks as used to be different to their registered 3D trade marks shown below due to differences in the dominant elements. It held

New on LimeGreen IP know-how: EUTM opposition, invalidity & revocation guides following legislative reform

We´ve added guides to European Union Trade Mark procedures to our existing jurisdictional guides on trademark Opposition, Invalidity and Revocation. Who can file such proceedings, where and when? Can proceedings be avoided through amicable settlement? We cover these issues and more taking into account changes which came into effect on 1 October 2017 as a result of the second wave of the Legislative

US: Our trademark lawyers speaking at 2017 McCarthy Symposium

We are delighted to be sponsoring and speaking at the seventh annual McCarthy Institute Trademark Symposium, taking place on February 17, 2017 in Seattle, Washington. The one-day event, titled “Trademark Law and Its Challenges,” brings together corporate brand representatives, trademark attorneys and public policymakers to address new issues in trademark law. Two of our trademark

EU/U.S. – Trademark Protection: Recorded comparative session

Last month we gave a Trademarks and Brands webinar focusing on European Union Trademark Protection. In this webinar, Pan-European trademark attorney, Julie Schmitt, and United States trademark attorney, Valerie Brennan, highlight the differences between trademark rights acquisition, protection, and enforcement in the EU and the U.S. They also touch on hot topics in EU trademark law, such as the

EUIPO: Fast-forward button and single member decisions for appeals

EUIPO’s Boards of Appeal have recently introduced expedited appeal proceedings to deal with urgent cases. Requests for this option can be submitted by appellants together with the statement of grounds or, for defendants, with their reply. It appears unlikely that the Boards will set expedited proceedings of their own motion. As to formalities, there’s no

EU: Chocolate Packaging – European General Court confirms that basic two-coloured packaging for chocolate is not inherently distinctive

Judgment of 10 May 2016 in Case T‑806/14 August Storck KG v EUIPO In 2013, August Storck KG filed an International Registration designating the European Union to protect the following packaging design as a trade mark: The application covered “confectionery, chocolate, chocolate products, pastries, ice-cream, preparations for making the aforementioned products” in class 30. The

EU trade mark reform – To renew or not to renew…

In our previous post we mentioned that the renewal fee situation for EUTMs was no longer clear, and that we considered the approach put forward by OHIM in its draft guidelines to be incorrect. We are pleased to report that the situation has now been clarified.  OHIM has today published a President’s Communication confirming that:

EU trade mark reform update

In our previous post we mentioned that brand owners should consider deferring renewals of EUTMs until after the introduction of the new EUTM Regulation where possible to save money. Unfortunately, the renewal fee situation is no longer clear.  The new Regulation will enter into force on 23 March 2016. However, OHIM has issued draft guidelines

Europe: Green light for European TM reform

Today, the European Commission published the new Trade Marks Directive (governing national trade marks across the EU) and the new Community Trade Mark Regulation (governing EU wide trade marks) in the EU Official Journal (L 341). These texts aim to make EU trade mark law fit for the challenges of business in the 21st Century. 

EU trademark reform: on your (trade)marks…get set…go!

Yesterday the European Parliament approved the biggest change in European trademark law in the last 20 years.  Comprising a new Trade Marks Directive (governing national trade marks across the EU) and a new Community Trade Mark Regulation (governing EU wide trade marks), it aims to make EU trade mark law fit for the challenges of