The assessment of likelihood of confusion among descriptive marks often causes puzzling decisions, especially when the analysis focuses on whether consumers understand the descriptive character of certain terms,  and when different consequences are attached to whether or not such understanding (or lack thereof) matters at all.   The General Court (GC) on 28 April 2021…

In our view they should, but the General Court held otherwise on January 27, 2021 in Case T-817/19, basically finding that coincidence in a non-distinctive element will still lead to a finding of likelihood of confusion. OmniVision GmbH, owner of an EUTM “HYLO-VISION” registered, among others, for medical preparations, filed an opposition against the EUTM…

How many times in the course of a trademark clearance have you discovered that clearly,  descriptive trademarks – usually registered because of some tiny stylization or unremarkable imagery – have been relied upon as bases for oppositions (often successfully) against other marks? These “kind” of trademarks was, quite appropriately by a long time friend, named…

In our previous post, we discussed the issue of terms that are descriptive in English but still lead to likelihood of confusion on an EU level, given the General Court’s belief that ” …if the word is not part of the mother tongue of  a territory such understanding cannot be presumed unless a sufficient knowledge by…

While the new EUTMR 2017/1001 deleted any reference to disclaimers – previously provided by Article 37(2) of EUTMR No. 207/2009 – both the EU Directive 2008/95 and the Recast Directive 2015/2436 neither allowed nor prohibited disclaimers at national level. Few Member States had disclaimers on their book (Sweden, Ireland and Latvia) and from Sweden the…

With decision of 25th February 2019, the German Federal Patent Court (Bundespatentgericht) has ruled on the registrability of a celebrity name for inter alia publications in class 16. The Bundespatentgericht is the appeals court for decisions of the German Patent and Trademark Office (DPMA). Franziska van Almsick, one of the most successful swimmers of recent…

The question of how far descriptive or non-distinctive trademarks which somehow managed to be registered may be enforced is of particular relevance in jurisdictions like Germany which acknowledge their incontestability ten years after registration. The more recent approach of the European Court of Justice (ECJ) was that it accepted likelihood of confusion also in a…

Three recent General Court judgments concerning oppositions between trademark in the pharmaceutical and cosmetic fields have caught our attention. In all three cases, the marks were found similar essentially on account of common rather descriptive elements. MUNDIPHARMA/MULTIPHARMA – T-144/16 of 7 November 2017: the EUTM application MULTIPHARMA in classes 5, 35, 42 was refused based…