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…

We’ve been seeing a lot more interest from life sciences companies in applying for slogans recently. After all, advertising campaigns are increasingly a fierce battlefield for IP litigation.  However, slogan marks often run at but rarely manage to take the hurdle of distinctiveness applied by the EUIPO and usually confirmed by the European Courts. Two…

It has been several months since our last publication on Brexit and the world is very different since then due to the COVID-19 pandemic. As for BREXIT, this could be another pandemic for several industries as it remains unclear whether there will be a deal or no-deal exit at the end of the transition period,…

Since 1 April 2020 most cancellation actions in France have become administrative proceedings and must be filed with the French trade mark office (“Institut National de la Propriété Industrielle”). Only invalidity actions based on earlier copyrights, designs, surnames, pseudonyms etc. remain judicial proceedings. These new administrative proceedings are the result of the implementation of Directive EU 2015/2426…

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…

On 2 July 2020, the Court of Justice of the European Union (“CJEU”) handed down another decision which interprets the mercurial concept of ‘trade mark use’. Case C-684/19 – mk advokaten is a preliminary reference concerning unauthorised use of a sign in an online advertising context. The Court reaffirmed Daimler (C‑179/1- Daimler AG) in that…

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…

On 30 April 2020, Advocate General Giovanni Pitruzzella (AG) delivered his opinion in the matter C809/18 P related to the conditions for application of Article 8(3) of Regulation 2017/1001 which provides a specific ground for refusal allowing owners of, in practice foreign, marks to oppose filings for EU trade marks made by their agent or…

CJEU’s recent preliminary ruling in Gömböc Case C-237/19 highlights assessment criteria regarding the registrability of shapes of goods as trademarks. The shape of the Gömböc was refused trademark protection in Hungary because the sign allegedly consisted ‘exclusively of the shape of goods which is necessary to obtain a technical result’ (in respect of toys) and…

Facts The plaintiff provides orthodontal treatment under his trade name Polzar. The defendant runs a network of orthodontists which assists them in marketing their services. The defendant had placed an Adwords ad on Google for the network and used the plaintiff’s trade name “Polzar” as a keyword. The ad itself did not mention the name…