European Union

The EU is an economic and political association of certain European countries as a unit with internal free trade and common external tariffs.

Case law, European Union, similarity of goods and services

(Hoffmann Eitle)/ /Leave a comment

Last year, the European Court of Justice (ECJ) took a decision clarifying the effects of the “Praktiker” decision on trademarks registered for “retail services” without further specifications in class 35 before the date of that judgement’s delivery in 2005. Regarding the background of the case, the German company Burlington Fashion GmbH, well-known for their argyle…

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…

European Union, Trademark

(schmid-ip)/ /Leave a comment

This is about how a hugely successful Austrian furniture giant turned the wheels a bit too far trying to save taxes through restructuring and licensing. An Austrian story, which, however, could probably have taken place anywhere in the European Union.   In a judgment of 27 November 2020 (case ref. Ra 2019/15/0162), the Highest Administrative…

descriptive elements, European Union

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

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…

Case law, European Union

(Osborne Clarke, University of Wrocław)/ /Leave a comment

We’ve been seeing a lot more interest from life sciences companies in applying for slogans recently. After all, advertising campaigns are increasingly a fierce battlefield for IP litigation.  However, slogan marks often run at but rarely manage to take the hurdle of distinctiveness applied by the EUIPO and usually confirmed by the European Courts. Two…

Brexit, Design Rights, European Union, Trademark, United Kingdom

, (Stobbs IP)/ /Leave a comment

It has been several months since our last publication on Brexit and the world is very different since then due to the COVID-19 pandemic. As for BREXIT, this could be another pandemic for several industries as it remains unclear whether there will be a deal or no-deal exit at the end of the transition period,…

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…

descriptive elements, European Union

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

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…

Case law, CJEU, European Union, Infringement

(PhD Candidate, University College London)/ /Leave a comment

On 2 July 2020, the Court of Justice of the European Union (“CJEU”) handed down another decision which interprets the mercurial concept of ‘trade mark use’. Case C-684/19 – mk advokaten is a preliminary reference concerning unauthorised use of a sign in an online advertising context. The Court reaffirmed Daimler (C‑179/1- Daimler AG) in that…