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:
In relation to subsection (i) of the Article, the CJEU held that a sign consisting of a shape which results from the nature of the goods must, in principle, be denied registration where the shape discloses one or more essential characteristics which are inherent to the generic function or functions of that product. Reserving such characteristics to a single economic operator would make it difficult for competing undertakings to give their goods a shape which would be suited to the use for which those goods are intended, these being the essential characteristics which consumers will be looking for in the products of competitors. In relation to subsection (iii), the CJEU held that the shape need not constitute the main or predominant value of the goods in order to be objectionable under that subsection, nor is the subsection limited to shapes having purely artistic or ornamental value. The shape need only give substantial value to the goods, and this may be the case even where the product exhibits several characteristics each of which may give that product substantial value.
The case involves the well-known Tripp Trapp high chair, first launched by Stokke in 1972. In 1998, Stokke applied for a Benelux trade mark registration for the shape of the Tripp Trapp chair as shown below.
Registration was granted for “chairs, especially high chairs for children”.
Hauck manufactured and sold its own children’s high chairs, including two chairs named “Alpha” and “Beta”. Stokke brought an action in the Netherlands claiming that Hauck’s manufacturing and marketing of the “Alpha” and “Beta” chairs infringed Stokke’s Benelux trade mark registration. In response, Hauck successfully counterclaimed for a declaration that Stokke’s trade mark registration was invalid. In an appeal before the Supreme Court of the Netherlands, the Court referred several questions to the CJEU regarding the interpretation of Article 3(1)(e).
The referring court’s first question asked whether subsection (i) should be interpreted as applying only to a sign which consists exclusively of a shape which is indispensable to the function of the goods in question, or whether it may also apply to a shape with one or more characteristics which are essential to the function of that product and which consumers may look for in competitors’ goods.
The CJEU outlined the rationale behind the grounds for refusal listed in Article 3(1)(e), namely to prevent trade marks being used to create a monopoly over functional characteristics or to extend indefinitely the life of otherwise finite IP rights, such as designs.
That being so, the CJEU held that if subsection (i) were limited to signs which consist exclusively of shapes which are indispensable to the function of the goods in question, this would effectively exclude only “natural” products which have no substitute, and “regulated” products whose shape is prescribed by law, which would in any event be prevented from registration by virtue of their lack of distinctive character, thus the underlying objective of the grounds for refusal would not be met.
Consequently, the CJEU concluded that subsection (i) extends to shapes of products with one or more essential characteristics which are inherent to the generic function or functions of the product, and which consumers may look for in the products of competitors, though the Court was keen to emphasise that subsection (i) cannot apply where the trade mark relates to a shape of goods in which another element, such as a decorative or imaginative element, which is not inherent to the generic function of the goods, plays an important or essential role.
It is interesting to note the CJEU’s comments regarding the process for assessing the “essential characteristics” of the sign, namely that the assessment may be based either on the overall impression produced by the sign or on an examination of each of the components of the sign in turn. This suggests that a sign may be assessed differently within the context of Article 3(1)(e) than in the context of Article 3(1)(b) (distinctiveness) and Articles 4 and 5 (conflicts between identical/similar trade marks), where it is the overall impression of the mark(s) that must be assessed.
The second question referred by the Netherlands Court was whether subsection (iii) should be interpreted as applying to a sign which consists exclusively of the shape of a product with several characteristics, each of which may give that product substantial value (such as, in the case of children’s high chairs, safety, comfort and reliability), or if the shape of the product must be considered the main or predominant value in comparison with such other values. The referring Court also asked if “substantial value” refers to the motive(s) underlying the relevant public’s decision to purchase and, if so, what proportion of public opinion is sufficient to deem the value “substantial”.
The CJEU noted that the fact that the shape of a product is regarded as giving substantial value to the product does not mean that other characteristics may not also give the product substantial value. Indeed, limiting the application of subsection (iii) to products having only artistic or ornamental value would mean that products having essential functional characteristics as well as significant aesthetic value would not be caught by the ground for refusal.
The CJEU therefore concluded that subsection (iii) may apply to shapes of products with several characteristics, each of which may give that product substantial value.
In relation to the public perception of the sign under Article 3(1)(e), the CJEU found that this is not a decisive element when applying the ground for refusal under subsection (iii), but may be a relevant criterion of assessment. Other assessment criteria may also be taken into account, such as the nature of the category of the goods, the artistic value of the shape in question and the dissimilarity from other shapes in common use on the market.
The referring Court’s third question asked whether the grounds for refusal set out in Article 3(1)(e) may be applied in combination. The CJEU held that the three grounds for refusal set out in Article 3(1)(e) operate independently of one another and cannot be applied in combination. If any of the three grounds is satisfied, the sign in question cannot be registered. It is irrelevant if more than one of the grounds applies, but registration should not be refused under Article 3(1)(e) unless at least one of the grounds is fully satisfied.
The registration of shape marks has always presented difficulties for brand owners, and the decision of the CJEU will not come as a surprise to many. It serves as a warning to those brand owners who have been able to register the shape of their product as a trade mark in the EU to consider carefully the validity of their registration before seeking to rely upon it in any contentious proceedings.
It will now be for the Supreme Court of the Netherlands to apply the decision to the particular facts of the Tripp Trapp case.
19 December 2014
07 December 2020
This document is intended to provide a brief introduction to Supplementary Protection Certificates (SPCs) for plant protection products. For more detailed information, please speak to your usual J A Kemp contact.
07 December 2020
This document is intended to provide a brief introduction to Supplementary Protection Certificates (SPCs) for medicinal products. For more detailed information, please see our full briefing on this topic.
02 December 2020
What are SPCs? A Supplementary Protection Certificate (SPC) is an intellectual property right available for active ingredients of human and veterinary medicinal products requiring marketing authorisation 1 . The highest tribunal hearing disputes involving SPCs for EU member states is the Court of Justice of the European Union (CJEU). Historically there have been numerous referrals to the CJEU on points of law relating to SPCs and this is expected to continue. Some of the key decisions are discussed below.
28 August 2020
The UK Supreme Court has handed down an important judgment1 which is likely to have global implications for how standard essential patents (SEPs) are licensed in the future. Background A standard essential patent (SEP) is a patent which covers technology which is required (i.e. is essential) to be used in order to implement a technical standard (for example such as 2G, 3G and 4G in the telecommunications industry). Conforming to the technical standard allows devices from different manufacturers to operate together and to use the same infrastructure. Standard Setting Organisations (SSOs) bring participants together to evaluate technologies for inclusion in a new standard....
04 December 2018
The Supreme Court in the UK handed down its decision in Warner-Lambert v Actavis on 14th November 2018 (and a copy of the complete decision is available here ). The Supreme Court considered the following issues in its judgment: how much data is required in the application as originally filed to support a second medical use claim; and the circumstances under which “cross label use” for the patented indication of a drug sold by a competitor company can constitute infringement of a second medical use claim.
06 November 2018
The Court of Appeal has given its decision in the appeal against Birss J’s decision in Unwired Planet International Ltd v Huawei Technologies Co Ltd relating to standard essential patents (SEPs) and how to determine fair, reasonable, and non-discriminatory (FRAND) terms. The Court of Appeal upheld Birss J’s decision (which we reported here) in all respects except one, holding, in summary, that a global licence was FRAND in this case, and that the FRAND requirement does not require the patentee to grant licences on equal terms to all third parties. The Court of Appeal overturned Birss J’s decision that there...
02 August 2018
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.
10 January 2018
The European Patent Office (EPO) uses the term “ disclaimer ” to refer to a negative feature in a claim of a patent application. Negative features are those which exclude certain subject matter from the scope of protection. While a positive feature in a claim may for instance take the form “ wherein the composition comprises X ”, a disclaimer would take the form “ wherein the composition does not comprise X ”.
26 July 2017
Experimental evidence can play a valuable role in patent litigation. It is not uncommon in patent validity proceedings for an expert will say to they would, when presented with a piece of prior art, have conducted a particular experiment in order to progress the research. Without then conducting the actual experiment that they said they would have done, it is impossible to know what the result of that experiment would have been. Knowing the result of that experiment is sometimes critical to a case, such as when the defendant argues the patent is invalid due to lack of novelty or...
21 July 2017
The UK Supreme Court’s judgment in Lilly v Actavis has profound implications for the scope of protection provided by patent claims in the UK. The judgment moves away from the principle that the patentee should enjoy the full extent, but no more than the full extent, of the monopoly that a reasonable person skilled in the art, reading the claims in context, would think he was intending to claim. Rather, following this new decision, a patent claim in the UK can be infringed by products or processes that are not within the ambit of the language used in the claims.
01 July 2017
The planned European Union-wide patent court and related patent right will not launch in December as planned. The Unified Patent Court preparatory committee said June 7 that the delay was caused by several countries failing to agree to the protocol on UPC Provisional Application. The protocol allows parts of the UPC agreement, the controlling document for the court, to come into effect earlier.
12 May 2017
Mr Justice Birss gave an important decision on 5 April 2017 concerning FRAND undertakings. FRAND stands for ‘fair, reasonable and non-discriminatory’ and the FRAND undertaking is the undertaking a patentee has to give when declaring a patent to be essential (‘essential’ meaning that it would inevitably be infringed by operating in accordance with a given standard) to the standards setting organisation (SSO) that it will grant licences on FRAND terms. Until this decision it was not clear exactly what ‘fair, reasonable and non-discriminatory’ meant nor the exact legal standing of the FRAND undertaking and while this decision cannot provide all...
04 April 2017
The Intellectual Property Enterprise Court (IPEC) is an alternative venue to the High Court of England and Wales for intellectual property litigation, patent, design, trade mark, copyright and trade secret cases. The IPEC typically hears less complex cases than the High Court (Patents Court), and provides monetary caps on claims. The IPEC (formerly known as the Patents County Court) has proved attractive, in particular for small and medium sized enterprises (SMEs), as a fast and cost effective IP litigation forum. There is a cap on the monetary value of claims before the IPEC of £500,000. J A Kemp’s Litigation and Dispute...
04 April 2017
Whether or not it is worth filing intellectual property rights IPRs in China is likely to be influenced by how you plan to develop your business. Are you planning to exit by selling your business, or assigning or licencing your product globally? Most investors and buyers will look for Chinese IPRs, and if you have none then this may affect the level of interest, or the price you can obtain. If on the other hand you are planning to grow your business yourself, then you should consider whether the cost of filing and maintaining an intellectual property right in China...
01 April 2017
The Supreme Court, the highest Court for England and Wales, has given guidance as to considerations to take into account when deciding whether an activity can be regarded as “making” a patented product and thus infringing a patent. This Decision has relevance for activities including reconditioning and repairing of patented articles and for sale of spare parts and even consumables of larger patented articles. The Decision makes it clear that the question of whether an activity is “making” is “one of fact and degree”. The Decision concludes that there are no fixed principles nor any single simple test to assess what constitutes...
01 February 2017
In decision G 1/151, the EPO’s Enlarged Board of Appeal ruled that an entitlement to partial priority arises for a generic claim in a European patent application in respect of subject-matter, disclosed in the priority filing, that is encompassed by the generic claim. The Enlarged Board's conclusions prevent so-called "poisonous divisional" attacks, as well as the possibility of "self-collision" with the priority application, provided that the claims of the priority-claiming European application contain exclusively broadening amendments compared with the disclosure in the priority filing. However, the wider reasoning in the decision emphasises the continuing importance of carefully drafting both priority applications...
01 February 2017
To what extent will a Supplementary Protection Certificate (SPC) for a biological product be considered to encompass closely-related alternatives such as biosimilars? This question has been addressed by the EFTA court in Pharmaq v Intervet, and subsequently applied by the Norwegian Court of Appeal. This briefing provides an analysis of the case as well as our conclusions and recommendations for those seeking SPCs for biological products.
08 December 2016
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.
01 November 2016
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.
29 June 2016
Since April 2014, it has been possible to file multiple divisional applications from any European patent application pending at the European Patent Office (EPO). Divisional applications can be filed from a European application which is itself a divisional application. Further, the EPO’s rules on double patenting are relatively liberal1. In some cases, Applicants have used these rules to file multiple divisional applications with similar claims. These divisional applications can then be kept pending at the EPO while challenges to the parent patent are determined in EPO opposition proceedings and/or in national litigation. If the parent patent is revoked, or is found...
15 March 2016
In the UK, a successful claimant in a patent infringement action is entitled to claim ‘damages’, that is monetary compensation for damage actually caused by the infringement (but not punitive damages), or an account of the infringer’s profits derived from the infringement. Damages are more commonly claimed than an account of profits so Design and Display v OOO Abbott provides useful, and rare, guidance from the Court of Appeal on how an account of profits should be assessed.
10 February 2016
The High Court of England and Wales was asked for permission to serve proceedings for UK patent infringement on a Chinese manufacturing company. In considering whether or not to grant permission, the court had to consider the burden of proof when establishing infringement of a process claim. It also considered whether or not the Chinese company could properly be said to be a joint tortfeasor.
23 June 2015
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).
16 June 2015
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.
04 March 2015
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  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...
15 June 2014
Do Not Immediately Contact the Infringer! You may discover or suspect that someone is infringing one or more of your IP (intellectual property) rights. It could be a patent at the core of your business, a trade mark protecting your main brand or an important product design. When you become aware of the situation, you may be tempted to go straight into battle and take immediate action. Your first instinct may be to contact the infringer straight away and tell them to stop infringing.
05 March 2014
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.
18 November 2013
Many countries have provisions which allow for compulsory licences to be granted under exceptional circumstances. However, in recent years, these provisions have only rarely, if ever, been used.
19 September 2013
In its decision in Generics (Mylan) V Yeda & Teva, the UK Court of Appeal considered the extent to which subsequent evidence can be relied upon for the determination of inventive step. The Court closely followed the approach adopted by the EPO to the consideration of such evidence. The decision provides a useful summary of the manner in which the technical contribution provided by a patent is assessed.
29 July 2013
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...
20 March 2013
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,...
01 April 2021
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).
27 May 2020
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.
01 October 2019
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....
27 March 2019
Whatever the technology, IP can form a significant intangible asset for a company. In addition to legally protecting the company’s products and activities from being copied by competitors, IP can generate revenue through licensing or sales, it can protect market share and increase return on a company’s R&D investment. IP therefore plays a vital role in establishing the value of a company. When looking to invest in a company that holds IP, a good understanding is needed, not only of what IP a company holds, but how that IP adds value to the company. IP is not just a matter of numbers: the strengths...
18 March 2019
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.
18 October 2018
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...
04 October 2018
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.
26 April 2018
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.
04 April 2018
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.
20 March 2018
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”.
07 March 2018
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.
20 June 2017
Amendments to the EU Trade Mark Regulation on 23 March 2016 brought about substantial changes to the EU trade mark system. However, not all of the changes were implemented with immediate effect.
05 June 2017
Inventors are often unaware of the potential variety of IP rights they could obtain to protect their technology, particularly design rights and how they can complement patents. This paper aims to assist new and developing businesses, by exploring key points in connection with patent and design protection, and suggests strategies for developing and managing an IP portfolio that can be used to protect and grow a business.
30 May 2017
Crowdfunding is a new and exciting way of raising funds. However, if you fund your business in this way you need to consider carefully how to protect your valuable intellectual property (IP). Crowdfunding involves wide and rapid disclosure of information. This can be beneficial to your business but may also pose some risks to your IP.
29 May 2017
Intellectual property (IP) rights are legal rights which provide protection for your innovative and creative endeavour. For example, IP could relate to something that you have created, such as a brand, an invention or a design, or could relate to information that you have developed or collated. When people talk about IP, they usually mean IP that can be registered: trade marks, patents and designs. However some IP rights arise automatically (so-called unregistered rights), such as copyright and unregistered designs. Each form of IP right has a different purpose in protecting a different aspect of your work and can be...
25 May 2017
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.
11 April 2017
China produces nearly a quarter of all global manufacturing output. It is therefore no surprise that a large proportion of Western companies are partially or wholly reliant on the Chinese manufacturing industry for the production of their products, and that many such companies are keen to go a step further and establish a presence in China.
29 March 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.
21 March 2016
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.
11 March 2016
Since Apple asserted a Community Registered Design against Samsung in 2012 in connection with their tablets' design rights, design rights have risen in profile. Although Apple were ultimately unsuccessful at proving infringement in some countries, the case illustrates that even a simple registered design can be a useful tool that cannot be ignored by competitors. For example, in the UK, the Intellectual Property Enterprise Court means that there is now an effective mechanism for enforcing registered designs that is relatively cheap, quick and efficient.
03 February 2016
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.
09 November 2015
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:
29 October 2015
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...
05 October 2015
The Hague system is the international application and registration procedure for designs and offers a very attractive and efficient way of obtaining design protection in multiple states with the filing of just a single application. Widespread use of the Hague system was previously limited due to the absence of some major states from the system. However, recent expansion of the Hague system to include the United States of America and Japan means that a single application can now lead to design protection in the US, Japan, Republic of Korea and the European Union, as well as over 50 other states around...
01 July 2015
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  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...
18 September 2014
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.
25 July 2014
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:
11 February 2014
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.
13 January 2014
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.
18 October 2013
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).
18 September 2013
Transforming research carried out in institutions such as universities and hospitals into commercial products and services can be a long and complex journey, but the results can provide significant income for the institutions involved, as well as improving the lives and prosperity of the public. IP often plays a central role in the success or failure of a project. It is crucially important to adopt the right strategies, both in terms of how an IP portfolio is grown and how it is used.
01 March 2013
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.
12 March 2012
What is a trade mark? A trade mark, often known as a brand, is a sign (whether it is a word, logo or something else capable of graphic representation) which identifies your goods or services from those of another. It is the badge by which customers find your product or services in the marketplace, and know how to find it again. Following use, a trade mark becomes a symbol with which your reputation and goodwill are associated. It is therefore likely to be one of your most important assets, deserving the best possible protection.