Distinctiveness is the characteristic of a trade mark which enables it to function as an indicator of the origin of goods and services.
Refusal of THE JOINT trademark application was affirmed on the grounds that the mark was merely descriptive of the applicant’s hospitality business services and acquired distinctiveness was not demonstrated. A hospitality services’ applications to register the mark “THE JOINT” for two different classes of services were properly refused because the mark was merely descriptive of…
Much has changed since the new Canadian Trademarks Act came into effect on June 17th 2019. Although practitioners were advised well in advance of the legislative and regulatory changes, there were many surprises, some unwelcome. Below are a few noteworthy changes that applicants should be well aware of before filing in Canada. New “Non-Distinctive” ground…
With decision of 25th February 2019, the German Federal Patent Court (Bundespatentgericht) has ruled on the registrability of a celebrity name for inter alia publications in class 16. The Bundespatentgericht is the appeals court for decisions of the German Patent and Trademark Office (DPMA). Franziska van Almsick, one of the most successful swimmers of recent…
The question of how far descriptive or non-distinctive trademarks which somehow managed to be registered may be enforced is of particular relevance in jurisdictions like Germany which acknowledge their incontestability ten years after registration. The more recent approach of the European Court of Justice (ECJ) was that it accepted likelihood of confusion also in a…
Yet another trademark dispute has been taken to court by APPLE. This time, APPLE lodged a trademark opposition against the letter „j“ trademark of an Italian incorporation by the name „Steve Jobs“ in front of the Swiss Federal Administrative Court (FAC) (B-1176/2017 (FAC)). After APPLE had failed to cancel the opposed trademark before the Institute…
In India, so-called translation cases, where a later mark is (or is alleged to be) a mere translation of an earlier mark leading to confusion resulting from conceptual similarity, are dealt with under the concept of “deceptive similarity”. While earlier decisions seemed to favour a broad interpretation of this concept, the judgment of the Delhi…
Is being environmentally friendly a quality which matters for consumers? And if it does, what it is “allure”? On the judgment of the General Court of 12 December 2018 in case T-253/17 regarding genuine use of the sign of Der Grüne Punkt Der Grüne Punkt – Duales System Deutschland GmbH is the owner of a…
In BASIC NET SpA vs EUIPO, (case C-547/17 of Sept. 6, 2018), shortly after the recent Nestlè/Mondelez KIT KAT case (C‑84/17P, C-85/17 P and C-95/17 P; see ‘CJEU on the Kit Kat shape and acquired distinctiveness of EU trade marks for shapes’ in this blog), the CJEU again tackled the issue of how and where…
The Paris Court of Appeal ruled that the French figurative trademark owned by Mr. Christian Louboutin and designating “high‑heeled shoes (except orthopedic footwear)” in Class 25, reproduced above, is valid (Paris Court of Appeal, 15 May 2018, No. 17/07124). The trademark is described as follows: “The trademark consists of the color red (Pantone 18.1663TP) applied to the…
It does not happen every day that you can see a trademark case decided by the EU General Court with a Polish claimant (EUTM applicant), represented by his Polish attorney, with a Polish judge as the rapporteur and even with Polish national acting as the EUIPO’s representative. One of very few non-Polish aspects of this…
