Next Step For EU Trade Mark Regulation: Further Reforms Coming Into Force

The High Court has issued its decision in the Sky v SkyKick case. The judgment follows the Advocate General’s opinion and the Court of Justice of the European Union’s (CJEU) decision of 29 January 2020 on questions referred to it by the High Court regarding broad specifications of goods and services.

Registered Community designs have been enforced with varying success. However, several steps are available to maximise the scope of the protected design, making it easier to combat infringers. Since becoming available in 2002, registered Community designs have been enforced with varying degrees of success. The body of case law built up since then offers some useful guidance on how to represent a new design in order to make the job of enforcement that much easier. This article considers the lessons that can be taken from those cases to inform a protection and registration strategy for new designs within the European Union....

On Friday 15 March 2019 the World Intellectual Property Organization released its UDRP statistics for the 2018 calendar year. As always the information is useful for brand owners and particularly those interested in knowing more about what their peers are doing in the online brand protection space.

Until 2008, it was not possible to register trade marks in the UK in respect of retailing of any sort. Retailing was considered not a service as such and as simply ancillary to a business providing its own goods and/or services, and thus not protectable. In 2008, the CJEU Praktiker Decision paved the way for acceptance of retailing of goods. In 2014, the CJEU Netto Marken Decision confirmed that retailing of services can also be a commercial activity in its own right and capable of protection. The UKIPO subsequently published guidelines on how to word retailing of services specifications to...

The Company Names Tribunal (CNT) was established on 1 October 2008 in order to provide brand owners with a cost-effective method of enforcing their trade marks against the registration of similar company names. The CNT has proven a useful tool against so-called “opportunistic” company name registrations, although there are some limitations to what it can achieve.

The CJEU has dismissed Nestlé’s appeal on the acquired distinctiveness of the KitKat bar. The Court has re-affirmed the principle that, for an EU trade mark to be registered on the basis of acquired distinctiveness through use, the acquisition of distinctive character needs to be shown in every Member State of the EU in which it did not, ab initio, have such character. It remains to be seen whether the CJEU decision signals the end for Nestlé’s trade mark registration, or is merely one decision in a series of appeals set to continue for some years to come.

The ongoing struggle of Nestlé to register a three-dimensional trade mark for the shape of its KitKat bar has been dealt a further blow by the opinion of the Advocate General delivered on 19 April 2018.  Advocate General Wathelet’s opinion supports the conclusion of the General Court that Nestlé’s evidence of acquired distinctiveness in 10 of the relevant 15 EU member states was not enough to establish acquired distinctive character in the relevant territory as a whole, though noting that in some cases it may be possible to extrapolate evidence for one country to another.

The novelty requirements for EU registered designs have peculiar provisions aiming to protect the validity of designs from obscure disclosures outside the EU.  The Crocs case ( T-651/16 ) provides some pointers as to when an internet disclosure might be considered obscure but holds that there is a presumption that a website will have been seen by someone from the relevant sector within the EU despite the fact that the designer’s business was located outside the EU.

Design law in Europe Design law in Europe has long sought to deny protection to “functional” designs but stops short of requiring that a design must have an aesthetic quality.  This is achieved in the Community Designs Regulations 6/2002/EC (CDR), Article 8(1), by denying protection to designs which are “solely dictated by [a product's] technical function”. 

The EUIPO Board of Appeal recently upheld a request for a declaration of invalidity against the following grey/orange colour combination trade mark, on the grounds that its imprecision allows for multiple different combinations of the two colours.

The lengthy saga of Nestlé’s attempt to secure a three dimensional trade mark for its Kit Kat shape has taken a further (and perhaps final?) turn, with the decision of the Court of Appeal dated 17 May 2017.

The 9 March 2016 judgment of the Supreme Court concludes the saga between PMS International Group Plc and Magmatic Limited.  Magmatic, who make the “Trunki” suitcase, have exhausted all avenues available for obtaining a decision that the PMS “Kiddee Case” infringes their design rights.

We are pleased to report the successful enforcement of our client Action Storage Systems Limited’s UK unregistered Design Rights in their highly successful eXtreme plastic locker.  The IPEC judgement, handed down by Judge Hacon on 7 December, demonstrates the power of the unregistered Design Right in restraining copying and the power of disclosure in revealing evidence of copying.  Various defences were raised and although none displaced the fact of infringement of the overall design, they did give rise to some interesting points of law.

In July, the U.K. repealed a provision that provided a shortened term of copyright protection for ‘‘artistic works.’’ Because this change also revives protection that had expired under the old law but would be revived under the new, rights holders in certain industries such as furniture makers may now have resurrected rights that can be asserted against those copying their works.

Following several years of discussion on proposed reforms to trade mark law in the EU, a new Trade Mark Regulation comes into force in the EU today, 23 March 2016.  The reforms also impact on the laws of EU Member States, who have three years to implement a new Trade Mark Directive into their national laws. From today, the Office for Harmonisation in the Internal Market (OHIM) will be known as the European Union Intellectual Property Office (EUIPO), Community Trade Marks (CTMs) will be known as European Union Trade Marks (EUTMs), and various other changes come into effect.

On 15 December, the European Parliament approved a new package of proposed reforms to trade mark law in the EU, marking an important step towards entry into force of a new Trade Mark Regulation, and the implementation of a new Trade Mark Directive.  The reforms, which were discussed in detail in our briefing of 29 October, constitute some of the most important changes to EU trade mark law since the introduction of the Community Trade Mark system in 1996.

The UK Intellectual Property Office (UK IPO) and the European Patent Office (EPO) continue to receive reports of applicants and proprietors being approached for payment by firms offering to perform official processing such as registering patents and publishing patent applications.  These firms often use names, abbreviations and/or logos which are confusingly similar to those used by official offices such as the UK IPO, the EPO, and the World Intellectual Property Organization (WIPO).   

Article 4(3) of Directive 2008/95/EC [and corresponding Article 9(1)(c) of Council Regulation (EC) No 207/2009] deal with rights based on CTMs that have a reputation in the EU.  The wording of Article 9(1)(c) reads:

Earlier this year, and following several years of discussion and consultation, the EU Council published the latest versions of a new package of proposed reforms to trade mark law in the EU.  The reforms encompass a new Trade Mark Directive and Regulation, intended to foster innovation and economic growth in the EU by providing accessible and efficient trade mark registration systems in terms of costs, complexity, speed, predictability and security.  The reforms aim to ensure coexistence and complementarity between the trade mark systems of the EU, to modernise the existing provisions and streamline procedures.  Whilst the wording of the latest...

A Community trade mark is liable to be revoked “if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; …" (CTMR Article 51(1)(a)). In The Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773 (IPEC), His Honour Judge Hacon held that “genuine use in the Community” will in general require use in more than one Member State and that two CTMs which had been used in the...

The Court of Appeal has delivered its decision on Roger Maier and Assos of Switzerland SA v. ASOS plc and ASOS.com Limited, the latest in a long-running series of trade mark disputes between Assos, the manufacturer of high-quality cycling clothing and sportswear, and Asos, the online fashion retailer.  The case considers the extent to which an infringer is able to rely on the “own name” defence to trade mark infringement under Article 12 of the Community Trade Mark Regulation (CTMR).

On 11 June 2015, the Opinion of Advocate General Wathelet was delivered in Case C-215/14, Nestle v Cadbury,   a case concerning the registrability of the shape of the well-known Kit-Kat chocolate bar.

In the first High Court trade mark judgement of 2015, Mr Justice Arnold recently delivered his decision in Enterprise Holdings, Inc v Europcar Group UK and Another [2015] EWHC 17 (Ch).  The well-known car rental companies were in dispute over the fact that both use an ‘e’ logo on a green background, with Enterprise claiming that Europcar’s use of its ‘e’ logo infringed Enterprise’s earlier rights in its own ‘e’ logo. Arnold J held that, although the marks were only similar to a low degree, there was a likelihood of confusion, and found in Enterprise’s favour on the grounds of trade...

The CJEU has delivered its decision on Case C-205/13 Hauck GmbH v Stokke A/S & others regarding the registrability of shapes as trade marks.  The case concerns the grounds for refusal or invalidity of a shape trade mark under Article 3(1)(e) of the Trade Marks Directive (2008/95/EC), which provides that a sign shall not be registered as a trade mark or, if registered, shall be liable to be declared invalid, if it consists exclusively of:

On 15 April 2014 the European Trade Mark and Design Network (Europeantmdn) published The Common Communication on the Common Practice of the Scope of Protection of Black and White Marks.  This publication stems from the Convergence Programme, a joint project between the European Community Trade Marks Office (OHIM) and the National Trade Mark Offices (TMO) of the EU, whose goal is to achieve practice convergence in several areas  where different practices exist across the EU.  OHIM updated its Guidelines to reflect the new practice on 2 June 2014 but other participating Offices, including the UKIPO, have yet to do so.

The decision of the CJEU as to whether a representation of the layout of a retail store, in this instance a flag-ship Apple ® store, was capable of registration as a trade mark was delivered in July (Case -421/13 Apple Inc. vs. Deutches Patent and Markenmat (DPMA)).  The mark applied for is below:

In a previous briefing (Design For “Trunki” Child’s Wheeled Suitcase Successfully Enforced), we reported the successful enforcement of Magmatic’s Community design for the “Trunki” against PMS International’s “Kidee Case”.  PMS were, however, successful in their appeal, leading to the decision at first instance being overturned in the Court of Appeal. The appeal addresses some important questions regarding the interpretation of the registered design and on what level a comparison should be made with an alleged infringement.

The General Court (GC) has handed down a judgment in Case T-285/12 The Cartoon Network, Inc. v OHIM and Boomerang TV, SA.  On 2 October 2013, the GC upheld the Decision of OHIM’s Board of Appeal and allowed an opposition to a CTM application for the plain word mark BOOMERANG on the basis of an earlier figurative registration for BOOMERANG.

The term “parallel imports” describes the purchase of trade marked or patented goods in one member state of the European Union (EU) and the subsequent export of those goods to another member state for resale.  Where EU law provides that a trade mark owner’s rights are exhausted after goods bearing the mark are first put on sale with his consent anywhere within the European Economic Area (EEA), the practice of parallel importation is permissible, subject to compliance with certain principles and procedures.

The Court of Justice of the European Union (CJEU) has recently handed down a decision on a reference from the Finnish Courts in Case C-109/12 Laboratoires Lyocentre v Lääkealan turvallisuus– ja kehittämiskeskus (the Centre for Safety and Development in the pharmaceutical sectors), Sosiaali– ja terveysalan lupa– ja valvontavirasto (Social and Health Authorisation and Supervision Authority).

The Court of Justice of the European Union (CJEU) has recently issued its decision in response to a reference from the English Court of Appeal.  In Case C-252/12, 18 July 2013, Specsavers International Healthcare Ltd, Specsavers BV, Specsavers Optical Group Ltd, Specsavers Optical Superstores Ltd v Asda Stores Ltd, the CJEU held that a figurative mark is put to genuine use where a word mark is superimposed over it, provided that the distinctive character of the figurative mark remains intact.  The CJEU has also held that where a figurative mark is registered in black and white, but has been used...

The Court of Justice of the European Union (CJEU) has recently handed down a rare judgment concerning the circumstances in which a trade mark can be found to have become the generic name of a product.  In Case C-409/12 Backaldrin Osterreich The Kornspitz Company GmbH v Pfahnl Backmittel GmbH, 6 March 2014, the CJEU found that it is the perception of the end consumer, rather than intermediaries within the supply chain, which is determinative.  If these consumers recognise a sign as the name of the product, rather than an indication of its trade origin, then the mark has become generic,...

This recent Patents County Court Judgment illustrates two points very well: how the UK unregistered Design Right allows a rightsholder to decide the extent of their rights after the event and the difficulty of proving a clean, independent design process.