National marks are trade mark registrations which have effect in one jurisdiction only and are registered at that country’s central trade marks registry.
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…
The prince and his prince house – where he lived happily ever after The Swiss Federal Administrative Court, as the appeal authority in opposition proceedings, supported the decision of the FIIP and ruled that there was a likelihood of confusion between the younger trademark “Prinzenhaus” (engl. prince house) and the earlier trademark “Prinz” (engl. prince)…
A decision of the German Federal Patent Court dated 13 September 2021 (Case 26 W (pat) 20/20) shows the sometimes thin line between likelihood of confusion and exploitation of the reputation when earlier reputed marks are involved. The mark MARBO RED was filed as German national mark in relation to liquids and flavors for electronic…
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…
The Austrian courts recently had the opportunity to provide some clarifications as to when a geographical indication, which is not protected as such under EU legislation, may be registered as a trademark, relying on the principles established more than 20 years ago in the “Chiemsee” preliminary rulings of the Court of Justice of the EU…
The so called “growth decree” (decree-law no. 34/2019, amended by the Italian Parliament as law 58/2019 in June 2019) has introduced a new category of marks in Italy: “historic marks” defined as those marks registered or used continuously for a period of at least 50 years to market products or services “made by an Italian manufacturing company of excellence, which…
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…
On imitation marketing and locally limited likelihood of confusion between the product get-up of “Mozartkugel” confectionery. The city of Salzburg is not only the birthplace of Wolfgang Amadeus Mozart, but also home to one of Austria’s most famous sweets, the „(Salzburger) Mozartkugeln”. The Austrian Supreme Court (“OGH”) recently decided in a conflict between two…
In a case earlier this spring, the Swedish Patent and Market Court dismissed an infringement action based on the reputed mark SOFIERO in relation to beers against SOFIERO KAFFEROSTERI used for coffee. The court concluded that coffee beans and ground coffee are dissimilar to beer and that the relevant consumer is not likely to find…
CeramTec GmbH is the owner of the color trade mark IR 1‘109‘076 claiming protection for a shade of pink (Pantone 677, see image). At the beginning of 2012, CeramTec applied for the extension of protection to Switzerland for said trade mark in connection with goods of class 10: “femoral head spheres, acetabular cup, all the…
