European Union Trade Mark (EUTM), a single trade mark registration covering all of the EU Member States.
On AG Szpunar’s Opinion in Case C-801/22 P BASMATI was the first of the appeals to the CJEU in the three „Brexit cases“. The other two are APE TEES (EUIPO v Nowhere, C-337/22 P) and SHOPPI (Shopify v EUIPO, C-751/22 P, see here and here)). The CJEU allowed all three appeals to proceed, and in…
A recent decision by the General Court deals with the weight of figurative elements in the overall impression of a sign. Facts The applicant applied for the registration of the following sign as an EU trademark for ‘publication of printed matter for advertising purposes’ (class 35) and for ‘entertainment services’ in class 41: The intervener…
Registrability of Works of Art as Trademarks Recently, the European Union Intellectual Property Office (“EUIPO”) and the Hungarian Intellectual Property Office (“HIPO”) have been asked in several cases to examine whether a work of art, in particular a painting, can be registered as a trademark. If a work of art is protected by copyright,…
In Case C-654/21, the CJEU ruled on a reference for a preliminary ruling from the Sąd Okręgowy w Warszawie (XXII Division of the District Court in Warsaw, Poland) in a dispute between two individuals. The dispute concerned an action for infringement of the European Union trade mark “MULTISELECT” brought before the Warsaw IP Court and…
We all know that highly famous marks enjoy a kind of “universal” protection for (almost) any goods and services. However, for only “average” well-known marks”, the threshold of necessary closeness depends on how well-known the trademark is, on the similarity of the marks, and on the type of injury. Background of the case In…
As expected, in its decision of 21 December 2022 (T-44/22), the General Court (GC) upheld the refusal of the packaging design shown above on the right as a trademark for tobacco products in class 34, agreeing with the EUIPO that it would take unfair advantage of the reputation of the Marlboro rooftop mark. The trademark…
A recent decision of the EUIPO’s Fourth Board of Appeal (BOA) dealing with conversion deserves a closer look at this instrument, and at the practice of the EUIPO relating to conversion (decision of September 26, 2022, Case R 1241/2020-4). To recap: when an EUTM application fails, or a registered EUTM is cancelled, it can be converted…
genuine use of an EU trademark within the EU for services provided outside the EU a summary of decision T‑768/20 of the General Court of the EU The background of this decision was an application for revocation for non-use against the EUTM owned by Standard International Management LLC, a US company. Yes, this is…
A judgment of the General Court demonstrates the controversial and problematic nature of retail services marks. The ALDI/ALDIANO Case The case concerns Aldi, the discount chain. An Aldi entity (in the following “Aldi”) filed an application for the declaration of invalidity against the EUTM ALDIANO, registered for “alcoholic beverages (except beers)” (class 33). Aldi relied…
The UK finally said bye-bye to the EU, but for how long will UK-based rights still matter in deciding EUTM-related controversies? This is the subject of two recent decisions by the General Court, i.e. the Basmati case, T‑342/20, decided on October 6, 2021, and the subsequent APE TEES case, T‑281/21, decided on March 16, 2022. In…
