Distinctive Character

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

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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…

Distinctive Character, Distinctiveness, Germany, Registrability

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After yet so many decisions denying trademark protection for slogans in Germany, the Federal Patent Court in Germany recently allowed registration of the slogan mark “Who stops you” (decision of the Federal Patent Court in Case 29 W (pat) 523/21). The trademark was filed for a variety of goods in Classes 9, 12 and 25,…

Coexistence, Community Trademark, conceptual difference, cosmetic trademarks, Distinctive Character, Distinctiveness, EU trade mark law, EUTM, General Court, Likelihood of confusion, Similarity of marks, Trademark

(Lubberger Lehment) and (Lubberger Lehment )/ /Leave a comment

The judgment of the General Court (GC) concerns a textbook case and addresses the typical arguments in trademark conflicts in the cosmetics sector. Facts The Applicant, Azalee Cosmetics, applied for registration of the following sign as an EU trademark for cosmetic products (class 3), cosmetic utensils (class 21), corresponding retail services (class 35) and beauty…

Acquired Distinctiveness, CJEU, Distinctive Character, Distinctiveness, EUIPO

(Lubberger Lehment )/ /Leave a comment

Dispute and Facts Munich SL owns an EU registration of 2004 for the following figurative mark: This representation means that the crossed stripes are placed on the side of a shoe. The registration covers ʻSports footwearʼ (class 25). In 2010, Munich SL sued Deichmann SE before the Regional Court of Düsseldorf for the infringement of…

descriptive, Distinctive Character

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

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…

3D Trademark, Brand Protection, Distinctive Character, Distinctiveness, Registrability, Shape marks, Switzerland

(MLL Meyerlustenberger Lachenal Froriep AG)/ /Leave a comment

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…

Beverages, Case law, Distinctive Character, EUIPO, European Union

(Oppenheim Legal)/ /1 Comment

Can coffee be hell? Of course, bad coffee, we knew that. On the other hand, the General Court (GC) has recently confirmed that the sign “HELL” can be protected for coffee-related products as an EU trademark (Hell Energy v EUIPO, T-323/20, available in French and, for the adventurous ones, in Hungarian). The applicant, Hell Energy…

Distinctive Character, General Court

, (Bugnion S.p.A)/ /1 Comment

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…

Distinctive Character, Norway, Trademark

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Following the inspirational blogs by Agnieszka Sztoldman and Katharina Schmid’s on slogans here and here, I would like to share some fairly recent decisions from Norway. They show that there is “hope in a hanging snore” for the protection of promotional slogans in Norway. It begins with the outdoor apparel slogan NEVER STOP EXPLORING. The…

Appeal, Austria, Case law, descriptive, Distinctive Character, Distinctiveness

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Inspired by my co-blogger Agnieszka Sztoldman’s August post on Teva’s headache over slogan (EU) trade marks, and the mood-lifting granting of protection to the slogan “STIMMUNG HOCH ZWEI” in Austria (see details below), this is to provide an overview on the protection of slogans and taglines in recent Austrian case law. As any other trademarks,…