German Federal Court of Justice rules on the scope of jurisdiction of national courts In an online context, IP infringement frequently occurs simultaneously in more than one country and so the flexibility to take action where it will have the greatest impact is critical. The German Federal Court of Justice has recently ruled on the
(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
The CJEU has just been posed the following questions on the interpretation of Article 97(5) of the EU Trade Mark Regulation ((EC) No. 207/2009) by the English Court of Appeal. The questions concern jurisdiction to hear EU trade mark infringement claims in a cross-border online advertisement and sale case and the answers will have consequences not
Judgment of 17 January 2018 in Case T-68/16 Deichmann v EUIPO – Munich The General Court (GC) upheld the Board of Appeal’s (BoA) finding that evidence showing minor differences in a cross device nevertheless clearly constitutes genuine use of the cross device as registered. What happened at EUIPO? Deichmann filed a revocation action (based on
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
Judgment of 7 December 2017 in Case T-61/16 – The Coca-Cola Company v. EUIPO / Modern Industrial & Trading Investment Co. Ltd (Mitico) The General Court confirms that actual commercial use of an EUTM application can demonstrate unfair advantage for the purposes of Article 8(5) EUTMR, even if such commercial use only occurred outside of
The colour of a product plays an important role in identifying its commercial origin. For this reason, seeking protection for abstract colour marks is a very valuable asset in trade. An example of this type of mark and its use is the colour combination Green / Yellow by John Deere as seen here: The European
General Court (GC) judgment in case T-736/15, 19 October Re-filings – legitimate interest versus bad faith Trademark re-filings can have a legitimate interest which could be to slightly amend the specification of goods and/or services of its previous rights or to modernise its trademarks (e.g. slightly changing the stylisation of its figurative trademark) – see
(Judgment of 11 October 2017 in Case C-501/15 P – EUIPO v Cactus) The CJEU confirms that two cases which fundamentally changed the EUIPO approach to construing the scope of protection of EUTMs do not have retroactive effects. The judgment also confirms that where there is a semantic equivalence between the verbal and figurative parts
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
The European Commission has released a position paper on “Intellectual property rights (including geographical indications)” giving us the first indication of how the Commission will approach the Brexit negotiations with the UK regarding Intellectual Property Rights (“IPR“). The Commission has set up a Taskforce on Article 50 negotiations with the United Kingdom to prepare the
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
IP Enforcement Focus is our series of written, video and audio posts which plug into your current European enforcement issues. These posts cover IP related court cases as well as relevant political and economic developments in this area. Over the last quarter, we have published 12 summaries of key IP enforcement developments, including 4 v-logs. This roundup outlines each commentary with a link
The Higher Regional Court of Frankfurt recently ruled on the territorial scope of cease and desist claims and the law applicable to damages claims in a case where infringing acts occurred in several EU Member States (Higher Regional Court of Frankfurt, case ref. 6 U 4/15). Generally, the EU trademark regulation provides unitary protection of
The CJEU returns to the consequences of the unitary character of EU trade marks in its recent combit / Commit ruling of 22 September 2016. The court confirms the principles it had laid down in Chronopost in 2011: The aim of protecting the trade mark functions trumps territoriality. Or, in other words: If the use
In the second Vlog of the IP Enforcement Series we report on another recent decision of the Court of Justice of the European Union which deals with the relationship between infringement and parallel opposition proceedings. The decision demonstrates how they can take quite different paths. Click here to watch our short V-log.
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
Judgment of 22 June 2016 in Case C-207/15 P Nissan Jidosha KK v EUIPO The Court of Justice of the European Union(CJEU) has held that where an EU trade mark (EUTM) has been partially renewed the owner still enjoys the six month grace period in which to file any further partial renewal requests relating to
The referendum question has finally been answered but a myriad other questions have arisen from the ballot box. In this post we look at three questions affecting trade mark portfolios, IP contracts and the UPC. We also invite you to learn more about how Brexit could affect your business in our full post referendum report here.
The EUIPO’s Board of Appeal has held that neither a heightened degree of attentiveness in relation to pharmaceutical products, nor the fact that conflicting marks primarily coincide in elements which health professionals might understand as an allusion to an active ingredient, can rule out a likelihood of confusion. This is all the more true if
The new European Union Trade Mark Regulation (“EUTMR”) comes into force tomorrow and represents the most significant change in European trade mark law in the last 20 years. Rather than setting out all provisions in full, the text of the new EUTMR only sets out the provisions of the previous regulation that have been amended,
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:
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
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.