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…
Imagine you file an application for a figurative mark, and EUIPO publishes it. But then your application is opposed by a third party. So while you’re fighting that battle, you file just the word portion of your figurative mark and get a registration. You also file, two further figurative marks containing the same word mark,…
There are still many IP professionals who are nostalgic of the “good old times” when instead of having to laboriously and meticulously identify the list of goods/services it was sufficient to simply indicate the “class heading” and et voilà you got protection for everything in the class. Yet, there were dangers lurking under this apparent…
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…
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…
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…
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…
