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Tag Archives: Opposition

‘Polo’ wins enhanced distinctiveness”chukkers” to offset weak distinctive character

In this EUTM case the General Court (GC) decided for The Polo/Lauren Company LP, concluding that alleged weak distinctive character of the earlier mark in regard to certain goods was amply compensated by the enhanced distinctive character that the earlier mark has acquired through the use in trade. 1st Chukker: In 2014, the EUTM applicant

EU: Mark your calendars, Benelux trademark law is changing

As of 1 June 2018, the Benelux Convention on Intellectual Property (“BCIP’) will be amended, giving the Benelux-Office for IP (“BOIP”) new authorities, and expanding the authority of the Benelux Court of Justice. We have summarized the most important changes below. Cancellation proceedings Cancellation proceedings of a Benelux trademark (either on absolute grounds, non usus

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

EUTMs: “Strategic” re-filings and the GC’s last word – for now – on related bad faith & proof of use

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

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

New on LimeGreen IP Know-how: Trademark opposition, invalidity and revocation guides

We’ve added three new topics to our free LimeGreen IP know-how resource focused on guiding you through trade mark opposition, invalidity and revocation proceedings. Who can file such proceedings, where and when? Can proceedings be avoided through amicable settlement? What about proving use or the risk of groundless threats? The new sections cover these issues and more in the following jurisdictions, with more

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

Trademark Opposition System now effective in Mexico

As we reported in our earlier post, and newsflash the implementation of the opposition system in Mexico entered into force on, August 30th, 2016, and it is important to consider the following: a) Once the application has been received, the Mexican Trademark Office’s (MTO) shall proceed, within 10 business days, with its publication in the IP

Mexico update: New trademark opposition system effective 30 August

As we reported in our earlier post, a significant amendment to the Mexican Industrial Property Law (IPL) was proposed. The amendment concerned the implementation of an opposition system in Mexico to streamline the registration process for trademarks and slogans and the publication process for trade names, thus, harmonizing the industrial property system in Mexico with global

Implementation of New Trademark Opposition System in Mexico

At the end of last year, a significant amendment to the Mexican Industrial Property Law (IPL) was proposed.  The amendment concerned the implementation of an opposition system in Mexico to streamline the registration process for trademarks and slogans and the publication process for trade names, thus, harmonizing the industrial property system in Mexico with global

Poland: Trademark registration procedure changes

An important change of the Polish Industrial Property Law came into force on 15 April.  The most relevant of the changes is a new regime for trademark registrations and oppositions.  Until today, the trademark registration procedure involved an ex officio examination of both absolute and relative refusal grounds.  The opposition period started after the decision on the

Mexico is on its way to adopt a Trademark Opposition System

On November 10, 2015 a proposed amendment to the Mexican Industrial Property Law (IPL) was published in the Senate’s Official Gazette. The amendment would implement an opposition system in Mexico which aims to streamline the registration process of trademarks, slogans and the publication of trade names, incorporating this global trend to the benefit of the

Trademarks 111: The trademark application process in 111 countries around the world

Our IP group offers a new comparative guide which outlines the trademark application process in 111 countries around the world, broken down into regions, and covering areas such as Application, Examination, Opposition, Cancellation, and Renewal. Click the link below to register for your free copy of the full guide. Trademarks 111

United Arab Emirates – New trademark opposition procedures causing concern

After many years of a growing backlog of trademark opposition cases awaiting a hearing, the UAE trademark office is now making a concerted effort to clear the backlog in the next few months. In order to achieve this ambitious objective, opposition hearings are being scheduled with as little as a couple of days’ notice. The