On 21st December 2021, the General Court (GC), in case T-369/20, dealt with “likelihood of association” setting out a double test which seems to be at odds with the previous case law, notably the landmark Sabel case (C-251/95). The EUTM application “CEFA Certified European Financial Analyst” in classes 9 and 41 was opposed on the…
We surely cannot. With Messi (see cases C-449/18P and C-474/18P MESSI) and Miley Cyrus (case T‑368/20 MILEY CYRUS), we learnt that reputation or renown of (personal) names is a factor which should be taken in consideration when comparing marks and which may ultimately exclude confusion with an earlier similar mark. However, two recent cases seem…
As you may recall, the CJEU in cases C-449/18P and C-474/18P of 17 September 2020, (see https://trademarkblog.kluweriplaw.com/2020/09/23/lionel-messi-scores-his-surname-trade-mark-the-cjeus-own-goal/) held that consumers recognized MESSI as the surname of the soccer player Lionel Messi, and considered this fact a matter of common knowledge because any reasonably observant and circumspect consumer was thought to regularly read in the newspapers…
The assessment of likelihood of confusion among descriptive marks often causes puzzling decisions, especially when the analysis focuses on whether consumers understand the descriptive character of certain terms, and when different consequences are attached to whether or not such understanding (or lack thereof) matters at all. The General Court (GC) on 28 April 2021…
We all felt that after the Red Bull decision (Case C-124/18, see here at https://trademarkblog.kluweriplaw.com/2019/08/13/no-monopoly-on-blue-and-silver-for-red-bull/), pure colour combination marks were a thing of the past. However, like in any respected zombies’ movie, they are back even though, for how long is not so certain. The General Court in case T-193/18 decided on March 24, 2021,…
Can the name of a historical, well known place be registered as a trademark? If we think about the NEUSCHWANSTEIN case (C-488/16), the answer is: yes, it can be registered, provided there is no connection between the designated goods/services and the famous place. But what about the “allure” associated with a well-known site? Should anyone…
In the assessment of the similarity of signs, visual, phonetic and conceptual similarity are evaluated and it is not necessary that similarity exist in all three aspects, one can suffice. Nonetheless, in the global assessment of likelihood of confusion, visual, phonetic and conceptual similarity do not actually carry the same weight, and often the balancing…
In our view they should, but the General Court held otherwise on January 27, 2021 in Case T-817/19, basically finding that coincidence in a non-distinctive element will still lead to a finding of likelihood of confusion. OmniVision GmbH, owner of an EUTM “HYLO-VISION” registered, among others, for medical preparations, filed an opposition against the EUTM…
In the absence of specific EU provisions, EU national court shall apply in regard to EUTM registrations the applicable national law pursuant to art. 129 EU Reg. 2017/1001 (EUTM Regulation). However, this may lead to different national interpretations and treatment of EUTM registrations and affect the unitary character of the EU mark, and as we…
“Dura lex sed lex” (it’s harsh but it’s the law) is a principle that usually does not admit exceptions. Unless of course one can make recourse to the “restitutio in integrum”, which, however, is a remedy not so easily obtainable, save perhaps around Christmas, as shown in the decision by the General Court in Forbo…
