descriptive

descriptive, Distinctive Character

, (Bugnion S.p.A)/ /Leave a comment

Andorran tobacco leaves (© Guia Andorra, https://en.guiandorra.com/post/the-manufacture-of-tobacco-a-production-full-of-tradition-and-of-great-economic-weight).   It should not be that strange that in a world where everything can be sold (well, almost) even States might think to capitalize on their own names and thus seek protection of the same as a trademark. However, getting one registered seems increasingly difficult and as confirmed…

Appeal, Austria, Case law, descriptive, Distinctive Character, Distinctiveness

(schmid-ip)/ /Leave a comment

Inspired by my co-blogger Agnieszka Sztoldman’s August post on Teva’s headache over slogan (EU) trade marks, and the mood-lifting granting of protection to the slogan “STIMMUNG HOCH ZWEI” in Austria (see details below), this is to provide an overview on the protection of slogans and taglines in recent Austrian case law. As any other trademarks,…

Case law, descriptive, Distinctiveness, United States

(CCH)/ /Leave a comment

Refusal of THE JOINT trademark application was affirmed on the grounds that the mark was merely descriptive of the applicant’s hospitality business services and acquired distinctiveness was not demonstrated. A hospitality services’ applications to register the mark “THE JOINT” for two different classes of services were properly refused because the mark was merely descriptive of…

Acquired Distinctiveness, Article 8(4) EUTMR, Coexistence, Denmark, descriptive, Lack of distinctiveness, Legal costs, National law

(Zacco Advokatanpartsselskab)/ /Leave a comment

Two sports companies, Sports Group Denmark A/S (“Sports Group”) and WaterNlife ApS (“WaterNlife”) conflicted over the use of ENDURANCE as a trademark for sports clothing. Sports Group had registered the device trademark However, the trademark was not used as registered. Mostly, Sports Group used the mark in a much simpler and minimalistic version that looked…

Acquired Distinctiveness, Appeal, cancellation, Denmark, descriptive, Evidence, Lack of distinctiveness

(Zacco Advokatanpartsselskab)/ /Leave a comment

In Denmark – as in the EU – it is possible to overcome an absolute ground for refusal based on non-distinctive character of the mark applied for if the applicant is able to provide proof that the mark applied for has acquired distinctive character through use prior to the application date, see Article 7(3) EUTMR…

Bundesgerichtshof, Case law, descriptive, descriptive elements, Distinctiveness, Evidence, Germany, National law, Trademark

(Lubberger Lehment )/ /Leave a comment

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…

Denmark, descriptive, Lack of distinctiveness, Registrability

, (Gorrissen Federspiel)/ /Leave a comment

A trademark registration of a color per se is notoriously difficult to achieve, but what about the name of a color? In two recent decisions from the Danish Board of Appeal (BOA) regarding the registration of the words MAGENTA and CREAM respectively, the question regarding the descriptiveness of color designations was the main issue. In…

Confusion, descriptive, descriptive elements, Distinctive Character, Distinctiveness, Germany, Lack of distinctiveness, Level of similarity of marks, National law, National marks, Opposition, Similarity of marks, Trademark, Weak elements in trademarks

(b/cl IP)/ /Leave a comment

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…

descriptive, Lack of distinctiveness, Norway, Trademark

(Protector IPC)/ /Leave a comment

This case has gone through all instances in the Norwegian court system, with the Norwegian Supreme Court rendering its first decision on colour marks in December 2017. Overall, the courts find that neither purple, nor specific shades of purple, have protection as unregistered trade marks for inhalers for GlaxoSmithKline in Norway. In 1999 GlaxoSmithKline (GSK)…