Whether use of a trade mark in just one Member State is sufficient or not to support the validity of a CTM is an issue practitioners and Courts have struggled with since the CTM system began. The issue was addressed by the CJEU in their decision in ONEL back in 2012. Yet MINT, one of the first UK IPO…
The CJEU had to decide whether “El Corte Inglés” was confusingly similar to “The English Cut”. It wasn’t – however it might just be similar enough for article 8(5) CTMR (dilution protection) to apply. In its judgment of December 10, 2015 (case C-603/14 P, “El Corte Inglés” v. “The English Cut”), the CJEU overruled the…
OHIM has released Communication 2/2016 of the President clarifying that the new fee regime will apply to all CTMs (then EUTMs) that expire on or after 23 March 2016 – even where renewal is requested before that date. All CTMs expiring before that date are subject to the current renewal fees. The new EU Trademark…
The European trademark package published in the EU Official Journal on 24 December 2015 brings numerous amendments of the EU Trademark Regulation and EU Trademark Directive. From the point of view of Czech and Slovak Industrial Property Offices, the reform package will result in a major procedural novelty consisting in the applicant’s right to require…
The General Court has upheld OHIM’s Board of Appeal in rejecting an opposition in which the shared element in the respective marks – PURE – was descriptive for the goods in question. This serves as a reminder of the difficulty of asserting rights on the basis of prominent descriptive elements within figurative or complex trade…
On 20 January 2016, the Chancery Division of the High Court issued its judgment on the latest appeal concerning Nestlé’s attempt to register the 3D shape of its four-fingered bar. Sadly for Nestlé, in a double blow, Mr Justice Arnold dismissed their appeal against an earlier decision to refuse the registration of their shape mark…
In his opinion of 17 December 2015 (Case C-163/15) concerning the trade mark ARKTIS, Advocate General Wathelet proposes that recordal of the license is not a necessary condition for the licensee to be able to bring an infringement action based on a CTM. According to Article 23(1) CTMR, the transfer, rights in rem and licenses…
17 IP-Offices of the European Trademark and Design Network, including OHIM, have agreed on a Common Practise regarding the scope of protection of black and white (hereafter B&W) marks. See Common Practise CP4. This Common Practise is not applicable in e.g. Denmark, as Denmark, Sweden and Norway have opted out of the implementation of the…
On January 1, 2017, the new Swissness legislation will come into force. A last minute attempt to stop the new legislation – which some consider overly complex – has recently been refused. The Swissness legislation will regulate the use of all signs and labels that refer to the Swiss origin of goods or services, and…
The Swedish Supreme Court has requested a preliminary ruling from the CJEU in respect of an infringement case involving a CTM in Sweden. The case involves the Swedish insurance company Länsförsäkringar AB (“LF”) who claimed that the Estonian construction company Matek A/S (“Matek”) infringed LF’s CTM through its use of a similar trademark . The CTM…
