The General Court of the European Union refuses to allow club AC Milan to register its trademark for stationery goods

BACKGROUND TO THE DISPUTE On 2 February 2017, the applicant, Associazione Calcio Milan SpA (AC Milan), submitted an application for international registration designating the European Union to the European Union Intellectual Property Office (EUIPO). Registration as a mark was sought for the following figurative sign: The goods in respect of which registration was sought are in, inter alia, Class 16 of the Nice Agreement and correspond to the following description: ‘Paper; cardboard; book…


INTA ANNUAL CONFERENCE 2021

HERNANDEZ MARTI ABOGADOS attended last week the annual INTA online congress and mini-conference that took place in person in Berlin. During the sessions, topics such as the importance of design and copyright and the issue of goods in transit were discussed. It was a perfect occasion to meet clients and colleagues again - see you in Washington.


Limitation of the effect of a trademark: descriptive use of the trade mark. Zara v. Boungiorno

BACKGROUND TO THE DISPUTE Boungiorno Myalert S.A. (hereinafter Boungiorno) is a company which in 2010 provided information services via the internet and mobile telephone network. At that time it launched a campaign for subscription to the SMS multimedia content delivery service which it marketed under the name "Club Blinko", in which it "offered, on certain web pages accessed via banners with the ZARA sign inserted in other web pages, on Facebook and Hotmail, participation in a prize draw in…


Weak trademarks and likelihood of confusion. Red Car Oil Gasolineras Lowcost" and "Red Ahorro 24 h" case.

BACKGROUND TO THE DISPUTE RED CAR OIL S.L. is a company engaged in the retail trade of automotive fuels and fuels and owner of service stations and car wash centres. On 28 January 2019, the said company filed an application for registration of the mixed trade mark "RED CAR OIL GASOLINERAS LOWCOST", with number 4.002. 215, to designate retail services for the retail sale of foodstuffs; retail services for the retail sale of tobacco; retail services for the sale of automotive fuels in specialised…


“Bachirulo" case. A change of product does not necessarily bring unique character to a design.

BACKGROUND TO THE DISPUTE ARTURO is the holder of registered industrial designs Nos. 514810-01 and 514810-02, consisting of applying the print of the “cachirulo aragonés” (handkerchief), in its two versions red-black / purple-black, to a tubular garment or neck brace. Since 1995, the trading company ORIGINAL BUFF S.A. has been marketing multifunctional tubulars with similar characteristics under the names "red vichy" and "electric vichy". ORIGINAL BUFF filed an action against D. ARTURO, in…


Common law action for passing off. Risk of misrepresentation and risk of dilution of the earlier trade mark. Abresham Super Basmati Selaa Grade One World's Best Rice v. Basmati

BACKGROUND TO THE DISPUTE On 14 June 2017, Mr Hamid Ahmad Chakari, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO). Registration as a mark was sought for the following figurative sign: The goods in respect of which registration was sought fall within Classes 30 and 31 of the Nice Agreement: Class 30: 'Flour of rice; rice-based snack food; rice cakes; rice pulp for culinary purposes; extruded food products made of rice´ and…


Calculation of the prescription period for industrial property claims against continuous infringement acts. - NADORCOTT mandarin tree case

BACKGROUND TO THE DISPUTE Following an application lodged by Nadorcott Protection SARL on 22 August 1995 with the Community Plant Variety Office (‘the CPVO’), the CPVO granted it a Community plant variety right in respect of the NADORCOTT variety of mandarin tree. An appeal with suspensive effect was brought against that decision before the Board of Appeal of the CPVO but was dismissed. Since 2006, JOSÉ CÁNOVAS PARDO S.L. has cultivated a grove of 4 457 mandarin trees of the NADORCOTT variety.…


A word sign must be refused registration if at least one of its potential meanings designates a characteristic of the goods or services concerned. “Made of Wood" case

BACKGROUND TO THE DISPUTE On 6 May 2019, the applicant, Mr Beelow, applied to the European Union Intellectual Property Office (EUIPO) for registration of a European Union trade mark. The trade mark applied for is the word sign 'made of Wood'. The goods in respect of which registration was sought are in Class 25 within the meaning of the Nice Agreement and correspond to the following description: 'T-shirts; sleeveless pullovers; polo shirts; polo jerseys; jumpers; hooded sweatshirts; shirts;…


The reputation enjoyed by the 'Estrella Galicia' trademark in the beer sector cannot be extended to oils and fats for food use. Estrella Galicia v. Estrella Andaluza

BACKGROUND TO THE DISPUTE The entity "Hijos de Rivera, S.A." lodged an administrative appeal against the decision of 23 October 2019 of the Spanish Patent and Trademark Office which dismissed the appeal lodged against the decision of 10 June of the same year which granted registration of trademark No. 3,741,648 "Estrella andaluza" (word graphic) applied for by the entity "Hottos 2018, S.L." to protect goods in class 29 of the international nomenclature, definitively granting the registration.…


The General Court finds that there is a likelihood of confusion. FRESHLY COSMETICS IDENTY v. IDENTITY

BACKGROUND TO THE DISPUTE On 6 June 2018, the appellant, Freshly Cosmetics, S. L., filed an application for registration of an EU trade mark at the European Union Intellectual Property Office (EUIPO). The trade mark in respect of which registration was sought is the following figurative sign: The goods in respect of which registration was sought are in Class 3 of the Nice Agreement and correspond to the following description: 'Make-up preparations; preparations for the care of the skin, eyes…