The European Court of Justice (ECJ) held in its decision C-541/18 of September 12, 2019 that the distinctive character of a sign applied for as a trademark –a prerequisite of eligibility for trademark protection– must be assessed in the light of all the relevant facts and circumstances. This includes all the likely uses of the…

The Board was found to have applied the wrong standard for the second time in adjudicating the same claim. The Trademark Trial and Appeal Board applied the wrong standard in determining that an Italian metal-working company by the name of Galperti did not commit fraud in its application to trademark its name, the U.S. Court…

Previously on the Kluwer Trademark Blog We have amply reported about the Gömböc case before. If you have missed the previous episodes, you may read our post on the request for a preliminary ruling to the CJEU by the Kúria, the Supreme Court of Hungary, and our contribution about the preliminary ruling of the CJEU…

Paragraph 30(2)(a) of the Trademarks Act requires that an application for a trademark must describe the associated goods and services in “ordinary commercial terms.” Approximately 64% of all objections raised by CIPO trademark examiners relate to goods and services descriptions. This note explains how applicants can mitigate the risk and cost of encountering such an objection. Using…

The scope of protection of a trade mark registration is a key question faced by trade mark practitioners when advising on rebrands. The recent Oatly case [Oatly AB v Glebe Farm Foods Limited [2021] EWHC 2189 (IPEC)] raises some interesting questions in the context of a likelihood of confusion and unfair advantage. Oatly owned a…

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…

As with other aspects of trade mark law, the UK and EU have adopted asymmetrical arrangements about exhaustion post-Brexit. The arrangements result in uneven outcomes on enforcement against parallel imports for UK and EU right-holders. It remains to be seen how the principle of exhaustion of UK rights will develop in the hands of the…

The Swiss Federal Tribunal has ruled that the shape of the Nespresso capsules is technically necessary and that Nestlé’s 3D trademark shall therefore be cancelled (decision 4A_61/2021 of 7 September 2021). The decision of the Swiss Federal Tribunal is a milestone in the trademark infringement proceedings initiated by Nestlé against Ethical Coffee Company (“ECC”), which…

Guerlain, the luxury French perfume, cosmetics and skincare house, has emerged victorious in their three year-long attempt to obtain registration of a three-dimensional EU trade mark in respect of the shape of one of their lipsticks (the mark applied for shown below):     Application before the EUIPO and the Board of Appeal   The…

It is a common occurrence in the lifetime of a brand for ownership to change. In some cases, multiple times as part of corporate restructuring or the sale of a brand. The cost and process for recordals can vary significantly in different countries. Generally, it is recommended that ownership be updated with local Trademark Offices….