Weak elements in trademarks

Elements of a trade mark which only possess a low degree of distinctive character are considered weak.

Article 8(5) EUTMR, Case law, General Court, Reputation, similarity of goods and services, Weak elements in trademarks

, (Gorrissen Federspiel)/ /Leave a comment

In a recent decision (T-726/21), the General Court (“GC”) confirmed that Rolex SA (“Rolex”) could not prevent the Danish fashion brand “Junk de Luxe” (owned by the company PWT A/S) from registering a trademark for their logo depicting a crown. The contested sign was among others filed for goods covering clothing, footwear and headgear in…

Denmark, descriptive elements, Weak elements in trademarks

(Zacco Advokatanpartsselskab)/ /Leave a comment

On 26 November 2021, in BS-10861/2021-SHR, the Danish Maritime and Commercial Court found no likelihood of confusion between the EU-registrations to VITAYUMMY (used as ) and  . Both for chewy vitamins in Class 5. The Court found that chewy vitamins should be considered to be a sub-category of dietary supplements in the form of fruit…

Trademark, Unitary character, Weak elements in trademarks

, (Bugnion S.p.A)/ /2 Comments

Should a registered EU trademark which consists of a descriptive term (in one of the EU languages) be capable to prevent registration of a later EUTM which is fanciful but happens to contain the same letter string, solely because in some EU countries knowledge of that language cannot be adequately proven?  What if that language…

Case law, Denmark, similarity of goods and services, Similarity of marks, Weak elements in trademarks

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In February this year a dispute between the law firm FOCUS Advokater (“FOCUS Lawyers” in English) and the accounting firm Beierholm was decided by the Danish Maritime and Commercial High Court (BS-40894/2019 SHR). The case concerned the use of the name BEIERHOLM FOKUS which FOCUS Advokater found to be an infringement of their trademark rights…

descriptive elements, Preliminary ruling, Weak elements in trademarks

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

While the new EUTMR 2017/1001 deleted any reference to disclaimers – previously provided by Article 37(2) of EUTMR No. 207/2009 – both the EU Directive 2008/95 and the Recast Directive 2015/2436 neither allowed nor prohibited disclaimers at national level. Few Member States had disclaimers on their book (Sweden, Ireland and Latvia) and from Sweden the…

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

(b/cl IP)/ /Leave a comment

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…

3D Trademark, Case law, Food, individual character, Lack of distinctiveness, National law, Registrability, Shape marks, Switzerland, Trademark, Weak elements in trademarks

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

In a recent judgement, the Swiss Federal Administrative Court once again confirmed its (too) strict position with regard to the registration of shape marks. The court ruled that a three-dimensional mark consisting of the graphical background of a popular chocolate bar’s packaging could not be registered since the design was not perceived as an indication…

conceptual difference, Confusion, cosmetic trademarks, descriptive elements, pharmaceutical trademarks, Weak elements in trademarks

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Three recent General Court judgments concerning oppositions between trademark in the pharmaceutical and cosmetic fields have caught our attention. In all three cases, the marks were found similar essentially on account of common rather descriptive elements. MUNDIPHARMA/MULTIPHARMA – T-144/16 of 7 November 2017: the EUTM application MULTIPHARMA in classes 5, 35, 42 was refused based…

Appeal, Distinctiveness, United Kingdom, Weak elements in trademarks

(Stobbs IP)/ /Leave a comment

This case concerns the first appeal from a Hearing Officer of the UK Intellectual Property Office (“UK IPO”) to the Scottish Court of Session.   The dispute at issue was between CCHG Limited t/a Vaporized (the “Appellant”) and Vapouriz Limited (the “Respondent”).  The Respondent had brought an invalidity action before the UK IPO based on…

Infringement, Level of similarity of marks, The Netherlands, Weak elements in trademarks

(NLO Shieldmark)/ /Leave a comment

Being a fashion company is not easy, in two ways. First, you have to be careful what to print on your clothing, even when this is meant as decorative artwork. On the other hand, you have to be watchful that your trademark is not printed on products of competitors, under the pretense of – the…