Español
DeutschThe conversion of an EU trademark allows an opposition to be maintained despite the invalidity of the earlier right
In June 2022, Cavour Srl filed a figurative trademark application in the European Union for services in Class 43 relating to temporary accommodation. However, Consulta GmbH filed an opposition to the application on the grounds that there was a likelihood of confusion with its earlier trademark right. The opposition proceedings were suspended in May 2023 at the opponent’s request, as there were ongoing invalidity proceedings concerning the earlier trademark. Furthermore, the General Court upheld…
The identity of the marks and the reputation of OBÉLIX require a new assessment of the case.
Les Éditions Albert René filed a request for the invalidation of the European Union trademark “Obelix,” owned by WORKS 11 MICHAŁ LUBIŃSKI and registered in Class 13, in connection with various types of firearms. The application for invalidation was based on the earlier European Union trademark “OBELIX” relating to the famous character from children’s comics, and registered for classes 9, 16, 25, 28, and 41 in connection with entertainment and merchandising activities. However, the application…
The evocation of protected designations of origin beyond products: the “Champanillo” case and the champagne PDO
This case was brought by the Comité Interprofessionnel du Vin de Champagne (CIVC) against a private individual over the latter’s use of the term “Champanillo” to describe his pub-and-beer-bar business, which, according to the CIVC, could constitute an infringement of the Champagne Protected Designation of Origin (PDO). The claim brought by CIVC was initially dismissed based on the differences between the products in question and their target audiences. The sign ‘Champanillo’ did not designate a…
Three-dimensional trade mark and technical function: the General Court upholds the refusal of a hand-shaped corkscrew.
The present dispute arises from an application for registration of an EU trade mark for a three-dimensional sign consisting of a hand-shaped corkscrew, for goods in Class 21. That application was rejected on the grounds that the sign applied for consisted exclusively of the shape of the product necessary to achieve a technical result in relation to the goods applied for. The Board of Appeal upheld the decision to refuse registration, finding that the essential characteristics of the sign were…
Preliminary Injunctions and Trademark Rights over “Houdini”: Limits to the Protection of Signs Linked to Public-Domain Characters
This order rules on the admissibility of the injunctive relief granted at the request of Houdini Heritage KFT, aimed at protecting the rights arising from its ‘Houdini’ trademark registration. The previous order required the defendants, Letsgo Entertainment S.L., Circus Espectacular S.L. and Beon Entertainment S.L., to cease using the name “Houdini” and similar names in their musical and advertising activities. The defendants filed an opposition to the injunctive relief, arguing that the…
Trademark Protection of Three-Dimensional Packaging in the Cosmetics Sector: The Case of the Aloe Vera Leaf Shape of the Holika Holika Brand
Enprani Co. Ltd, a cosmetic manufacturer and retailer that markets a range of products under the Holika Holika brand. The products’ main ingredient is aloe vera. These products are sold in packaging shaped like an aloe leaf. Furthermore, such packaging is registered under three European trademarks for class 3. To defend its trademarks, Enprani has taken legal action against Aquarius Cosmetics SL for trademark infringement and unfair competition. The defendant, which manufactures and…
Hernández Martí Abogados attends the 6th IP Case Law Conference organised by the EUIPO in Alicante
Hernández Martí Abogados attended the 6th IP Case Law Conference organised by the European Union Intellectual Property Office, held in Alicante on 21 and 22 May 2026. The conference brought together members of the General Court of the European Union, the Boards of Appeal of the EUIPO, representatives of national and international IP offices, in-house counsel and intellectual property practitioners from across Europe and beyond. Throughout the two-day programme, participants discussed some of…
Footwear and community designs: can customising existing designs provide protection? The CJEU clarifies the requirements of novelty and individual character
In the present case, the Court of Justice is ruling on a reference for a preliminary ruling arising from a dispute between various companies whose business consists of the sale of footwear. Deity Shoes is a company that holds several Community designs relating to footwear. Its designs are created using catalogues from third trading companies which, based on lists of predefined elements, allow for the customisation of various components of the footwear (colour, material, buckles, laces, etc.).…
The scope of coexistence agreements and the limits of the ius prohibendi in relation to patronymic trade marks: the “RONCATO” case
In 1996, the Roncato brothers divided control of their companies, which were primarily engaged in the manufacture and sale of suitcases. To this end, they reached an agreement in which they undertook not to cause confusion regarding the products and trademarks marketed under the common name ‘Roncato’. However, the company VALIGERIA RONCATO S.P.A.,(hereinafter VALIGERIA), owned by one of the brothers, brought an infringement action against the other brother’s company, BAULIFICIO ITALIANO…
The limits of place names in trade mark law: the Valcavada case
Since 2005, Grupo Solar de Samaniego S.L. has been the proprietor of the Spanish word mark “Valcavada” for alcoholic beverages in Class 33. Under this mark, Samaniego produces and distributes red wine from its winery in Laguardia (Álava), which has received various international accolades. Meanwhile, Bodegas Herederos de Perfecto Martínez S.L. has been the proprietor since 2016 of the Spanish word mark “1808 Temperamento natural Valcavada singular vineyard”, intended for alcoholic beverages…