cancellation

cancellation, descriptive elements, Designation of Origin, Distinctive Character, European Union, Trademark

(schmid-ip)/ /Leave a comment

Already in 2019, the Austrian Supreme Court (“OGH”) had confirmed the lower instance decisions cancelling the Austrian figurative mark “SW Sophienwald” for being decriptive of its geographical origin for glassware and related goods in classes 14, 21 and 33 (decision of 26.11.2019, case 4 Ob 152/19k, please refer to my prior blog post here). One year…

Appeal, cancellation, Case law, Genuine use, revocation, Trademark

(schmid-ip)/ /Leave a comment

A recent decision of the Higher Regional Court Vienna (OLG Vienna), second – and often last – instance in cancellation and revocation proceedings in Austria, showcases the risks of a mismatch between trademark specifications and actual trademark use. We are all aware that EU trademark law allows for trademarks to be registered for a vast…

cancellation, United States, WIPO

, (Bugnion S.p.A)/ /Leave a comment

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…

Acquired Distinctiveness, Appeal, cancellation, Case law, Confusion, Distinctiveness, EUIPO, Level of similarity of marks, Likelihood of confusion, Similarity of marks, United Kingdom

, (Stobbs IP)/ /Leave a comment

The General Court of the European Union (“GCEU”), annulling the Board of Appeal (“BOA”) decision, found that L’Oreal’s K K WATER mark is not confusingly similar to Heinze’s earlier K mark. It was not disputed that the hair treatment goods covered by L’Oreal’s K K WATER mark in Class 3 (a sub-brand of its leading house…

Bad faith, cancellation, Invalidity, revocation

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As of January 14, 2023, actions for revocation and invalidity of Spanish trademarks can be filed through administrative proceedings before the Spanish Patent and Trademark Office (“SPTO”). This is expected to make cancelling a trademark, quicker, cheaper, and more flexible than through Court proceedings. This is likely to be most relevant for non-use cancellation actions…

cancellation, Case law, Distinctiveness, United States

(Wolters Kluwer Legal & Regulatory US)/ /Leave a comment

The Board erred by failing to consider whether the registered BROOKLYN BREW SHOP mark has acquired distinctiveness for beer-making kits. In an effort by the owners of the mark BROOKLYN BREWERY to cancel registration of the mark BROOKLYN BREW SHOP, the U.S. Court of Appeals for the Federal Circuit has held that the Trademark Trial…

cancellation, Case law, Evidence, United States

(Wolters Kluwer Legal & Regulatory US)/ /Leave a comment

Panel confirms that the Trademark Trial and Appeal Board (TTAB) need not find that a German company owned a US trademark rights to pursue a cancelation action. In denying a California piano retailer’s petition for rehearing, a panel of the U.S. Court of Appeals for the Federal Circuit has expanded on the panel’s prior decision…

cancellation, Case law, United States

(Wolters Kluwer Legal & Regulatory US)/ /Leave a comment

The TTAB did not abuse its discretion by canceling the registration for HOLLYWOOD BEER as a sanction for repeated and willful failure to comply with the Board’s discovery orders in a cancellation proceeding. The Trademark Trial and Appeal Board did not abuse its discretion in cancelling registration for the mark HOLLYWOOD BEER on the Supplemental…

Bundesgerichtshof, cancellation, Case law, Germany, National marks, Registrability, Shape marks

(b/cl IP)/ /Leave a comment

  The German Federal Supreme Court today once more decided on cancellation claims against German trademark registrations for square-shaped packaging for chocolate products (Decision of 23 July 2020 in Cases I ZB 42/19 und I ZB 43/19). According to the Court’s press release, it confirmed a decision by the Federal Patent Court which rejected the…

cancellation, EU Trademark reform, France, Invalidity, revocation, Trademark

(Umami Law)/ /Leave a comment

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…