European Union Trade Mark (EUTM), a single trade mark registration covering all of the EU Member States.
2021 Wrap up – EUTMs in Luxembourg
Verena von Bomhard (BomhardIP)/ December 31, 2021 December 31, 2021 /Leave a comment
2021 has yet again been a busy year for the General Court when it comes to decisions dealing with EU trademarks. It would also have been busy for the Court of Justice; however, alas, also in 2021 the CJEU has not allowed a single appeal in EUTM matters to proceed, rejecting 47 appeals as not…
Bundesgerichtshof, Community Trademark, EUTM, Germany, Infringement, Infringement action, Likelihood of confusion, similarity of goods and services
The "Pearl" Decision by the Federal Supreme Court: Climate Change and Assumed Licenses as Factors of Similarity of Goods
Kai Schmidt-Hern (Lubberger Lehment )/ October 13, 2021 October 14, 2021 /Leave a comment
The "Pearl" decision by the Federal Supreme Court (BGH) may not be brand new (15 October 2020), but it is interesting in many respects. This post will deal with the similarity of goods. Facts The plaintiff owns an EUTM, registered in 2009, and a German registration, from 2003, for the word PEARL. Both are protected…
Austria, EUTM, Names, revocation
About wine barrels and family traditions: revocation of marks that become misleading over time
Katharina Schmid (schmid-ip)/ August 24, 2021 August 24, 2021 /Leave a comment
Under EU trademark law, a trademark may be revoked if it becomes a misleading indication as to the nature, quality or geographical origin of the goods or services it designates after the date on which it was registered, as a result of the use made of it by its proprietor or with its consent (Art….
Case law, EUTM, Infringement, Likelihood of confusion, Similarity of marks, Sweden
Sweden: Ghost trademarks not likely to be confused due to visual differences
Gustav Melander (AWA)/ April 9, 2021 April 9, 2021 /Leave a comment
The Swedish Patent and Market Court (PMD) ruled out a likelihood of confusion between two figurative trademarks for "ghost" and "GHOST VODKA" based on their mere visual differences. In fact, the Court concluded that the sigs were dissimilar, without even analyzing the signs on a phonetical or conceptual level. A good outcome for the defendants…
EU Trademark reform, EUTM, National law, Romania, Trademark
Overdue reform: at last Romania is set to transpose the Trade Mark Directive
Florica Rus (BomhardIP)/ July 3, 2020 July 3, 2020 /Leave a comment
Yesterday, 2 July 2020, the European Commission announced that it will refer Romania to the CJEU for not implementing the Trade Mark Directive (Directive (EU) 2015/2436) – see here. While the deadline to transpose the Trade Mark Directive is long overdue – 14 January 2019, Romania is yet to proceed with this, making it the…
Confusion, EUIPO, EUTM
NESTLÉ'S ONE IS NOT THE ONLY ONE…
Verena von Bomhard (BomhardIP)/ January 31, 2020 January 31, 2020 /Leave a comment
Is this the (only) ONE? The General Court denies likelihood of confusion, contrary to EUIPO In one of its last decisions in…
Bad faith, CJEU, EUTM, General Court
The bad faith conundrum in the EU continues – KOTON, SKY, ANN TAYLOR, NEYMAR, CAFÉ DEL MAR
Florica Rus, Verena von Bomhard (BomhardIP)/ October 31, 2019 October 31, 2019 /Leave a comment
Bad faith is on the rise – whether in reality or as a useful weapon against trade marks is another question. Recently, both the General Court (GC) and the Court of Justice (CJEU) have had several opportunities to consider whether trade marks had been filed in bad faith. The tendency seems to become stricter and…
Case law, EUTM, Registrability, United States
US to decide on the registrability of scandalous trademarks
Erica Vaccarello (De Simone & Partners S.P.A.)/ May 1, 2019 May 2, 2019 /Leave a comment
By the end of June, the US Supreme Court will have ruled on the registrability of scandalous and immoral marks in Iancu (USPTO) v Brunetti (No. 18-302). The case raises the issue of whether, in light of free speech under the First Amendment, a ban on the trademark registration of "immoral" or "scandalous" marks should…
EUIPO, EUTM, General Court
Is Article 8(3) EUTMR applicable only to identical marks? The General Court pitches in, but it is not the last word yet.
Sara Parrello, Fabio Angelini (Bugnion S.p.A)/ January 10, 2019 January 10, 2019 /Leave a comment
With decision of 15.10.2018 on case T-7/17, the General Court (GC) has clarified an important factor for applicability of Article 8(3) EUTMR, on the prohibition for registration of a trademark filed by an agent or a representative of the trademark owner. However, as the GC's decision has been appealed (C-809/18 P), we will have to…
3D Trademark, Denmark, EUTM
Denmark: Only the Queen's signature is missing now
Louise Thorning Ahle (Zacco Advokatanpartsselskab)/ November 30, 2018 December 3, 2018 /Leave a comment
The Danish Parliament, Folketinget, passed a new Danish Trademark Act (TMA) on 20 November 2018. The TMA implements the harmonisation of the relevant EU directive (Directive (EU) 2015/2436 of 16 December 2015). The new TMA will implement a number of changes, including: It becomes optional whether or not to have earlier rights cited during the…