The Court of Justice has said that reputation and enhanced distinctive character are not relevant to the assessment of similarity of the signs under Article 8(1)(b) of the Regulation and should only be considered in the assessment of likelihood of confusion. This is important because if the marks are not held to be similar, there…

We know that save in “exceptional” cases, colours do not initially have a distinctive character, although they may be capable of acquiring such character as the result of the use made of them.  But what if the colour is unusual with regard to the products it designates –  does this help to be included in…

Background In 2016, Jaguar Land Rover  (“JLR”) applied to register four UK trade mark applications for the shape marks of the Land Rover Defender 90 and Land Rover Defender 110 vehicles, in Classes 9, 12, 14, 28 and 37: All four applications were successfully opposed by Ineos Industries Holdings Limited (“Ineos”) in respect of most…

Many trademark functions of the Canadian Intellectual Property Office (‘CIPO’) have been seriously delayed largely as a result of the pandemic. As practitioners became adjusted to the new reality, so too did CIPO, who has worked diligently to overcome administrative problems caused by the pandemic.  That said, the pandemic and issues relating to Madrid adherence…

The Swiss Federal Administrative Court (BVGer) had to decide the likelihood of confusion between CRUNCH, a trademark of the Société des produits Nestlé SA and TIFFANY CRUNCH N CREAM, a trademark of the International Foodstuffs Co. LLC (B-6222/2019). Nestlé had failed to cancel the opposed trademark before the Institute for Intellectual Property (IPI) and appealed…

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…

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…

Should a registered EU trademark which consists of a descriptive term (in one of the EU languages) be capable to prevent registration of a later EUTM which is fanciful but happens to contain the same letter string, solely because in some EU countries knowledge of that language cannot be adequately proven?  What if that language…

The UK High Court has laid out its ruling following CJEU’s decision on SkyKick. To recap, the CJEU ruled that overly broad specifications will not automatically render a registered mark invalid and that the lack of intention to use the mark at the time of its application will not necessarily result in bad faith. What…