To which extent can the General Court review decisions by the EUIPO Boards of Appeal (BoA) is an issue never properly addressed, and one that the CJEU has found to be “significant with respect to the unity, consistency or development of EU law”. Thus, with its order of July 11, 2023, it allowed an appeal…
Since the introduction on 2019 of the filtering mechanism according to which the CJEU has to decide whether or not allow an appeal to proceed in cases that have already been considered twice (such as by the EUIPO’s Board of Appeal and by the General Court), only few appeals have been considered treating issues that…
It is understandable why (most) trademarks owners do not like the five-year dependency period of an international registration since in case of “central attack” or refusal of the basic application, they face cancellation of their international registration. However, it’s less understandable why the judges of the EU General Court (GC) do not like it, unless…
A recent decision of the EUIPO’s Fourth Board of Appeal (BOA) dealing with conversion deserves a closer look at this instrument, and at the practice of the EUIPO relating to conversion (decision of September 26, 2022, Case R 1241/2020-4). To recap: when an EUTM application fails, or a registered EUTM is cancelled, it can be converted…
So you finally got your trademark registration and now you can go ahead and use it, and get back some good revenues out of your hard work. But what if you put your trademark on a product manufactured by a third party? Can you end up being held liable for damages caused by a defect…
First it was getting a registration as a trademark for the name of a State (see at https://trademarkblog.kluweriplaw.com/2022/03/28/mission-impossible-register-the-name-of-a-state-as-a-trademark/). Now, it is getting the European Union Court of Justice (CJEU) to review a decision of the General Court (GC) on trademark and design matters arising from the EUIPO Boards of Appeal. As already reported (see at…
The EU trademark law system does not have, unlike the US, a legal concept of “incontestability”. Instead, it has “acquiescence”, a defence against invalidity or infringement actions which can be raised against the owner of an earlier mark who has acquiesced, for a period of five successive years, in the use of a later registered…
When a IP court awards the winning party the reimbursement of the costs incurred, what exactly can be included in such an award and how to determine its amount is not always obvious. Surely it is curious that the Court of Justice (CJEU) dealt with these issues in two recent decisions, both issued last April…
The UK finally said bye-bye to the EU, but for how long will UK-based rights still matter in deciding EUTM-related controversies? This is the subject of two recent decisions by the General Court, i.e. the Basmati case, T‑342/20, decided on October 6, 2021, and the subsequent APE TEES case, T‑281/21, decided on March 16, 2022. In…
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…
