Opposition

Opposition is a registry procedure during which third parties can challenge a new trade mark application.

aural similarity, Case law, conceptual difference, Distinctiveness, Infringement, Level of similarity of marks, Likelihood of confusion, Opposition, Similarity of marks, Switzerland, Trademark

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

Of Sea Lions and SEAT Leons: Swiss Court Weighs in on Automobile Trademarks How different do “animal trademarks” need to be to coexist in the Swiss market? A recent decision from the Swiss Federal Administrative Court offers a compelling answer, resolving a dispute between SEAT S.A. and the trademark “Sea Lion” (fig.), both registered for…

Basmati, Brexit, EUIPO, EUTM, Invalidity, Nowhere, Opposition, relevant Time, Shopify

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On 10 April 2025, Advocate General (AG) Cápeta delivered her opinion in the matter EUIPO v Nowhere, C-337/22 P, also referred to as APE TEES. The opinion is both surprising and concerning. If the CJEU were to adopt AG Cápeta’s views, this would mean a complete overhaul of EU trademark law as we know it, and…

Article 8(4) EUTMR, Article 8(5) EUTMR, Opposition

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The Opposition Division has partially upheld an opposition filed by Jaguar Land Rover (“Jaguar”) against EUTM application no.16778672 for the figurative mark, , applied for by luxury fashion designer, Philipp Plein. Jaguar based its opposition on earlier EUTM registrations covering several variations of its logo, as well as unregistered rights in these marks. These earlier…

Article 8(5) EUTMR, Austria, Brand Protection, Case law, degree of reputation, EUTM, Opposition

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  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…

Case law, Likelihood of confusion, Opposition, United States

(Wolters Kluwer Legal & Regulatory US)/ /Leave a comment

The LEHMAN BROTHERS mark has been used continuously in the course of winding up the affairs of at least one Lehman Brothers affiliated company. In a case involving competing applications to register the mark LEHMAN BROTHERS, the U.S. Court of Appeals for the Federal Circuit has affirmed a decision by the Trademark Trial and Appeal…

Distinctiveness, Likelihood of confusion, National marks, Opposition, Similarity of marks, Switzerland, Trademark

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

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)…

Appeal, Brexit, CJEU, EUTM, General Court, Opposition, United Kingdom

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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…

Case law, Figurative mark, Infringement, Opposition, Poland

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

On 2 March 2021 the Polish Supreme Court finally decided that the famous Polish boxer Dariusz Michalczewski had won his case against FoodCare sp. z o.o. for the “Tiger” trademark for popular energy products (III CSKP 5/21). The internationally renowned Polish boxer Dariusz Michalczewski used the nickname “TIGER” during his sporting career. His nickname was…

Confusion, descriptive, descriptive elements, Distinctive Character, Distinctiveness, Germany, Lack of distinctiveness, Level of similarity of marks, National law, National marks, Opposition, Similarity of marks, Trademark, Weak elements in trademarks

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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…

Confusion, Distinctive Character, Distinctiveness, Figurative mark, Opposition, Reputation, Switzerland, Trademark

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

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…