Requirements for an unregistered trade mark to be able to apply for a invalidiy declaration of a subsequently registered trade mark.

Background to the dispute On 22 September 2009, Fiesta Hotels & Resorts, 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 services in respect of which registration was sought are in Class 43 of the Nice Agreement and correspond to the following description: 'Restaurant services (food and drink); temporary accommodation'.…


The General Court points out that designations of origin are protected for both goods and services. Champanillo v. Champagne

Case C 783/19 concerns a reference for a preliminary ruling from the Audiencia Provincial de Barcelona to the Court of Justice in the proceedings between the Comité Interprofessionnel du Vin de Champagne (CIVC) and GB concerning infringement of the protected designation of origin (PDO) "Champagne". Background to the dispute GB has tapas bars in Spain and uses the sign CHAMPANILLO to designate and promote them on social networks and in advertising leaflets. In addition, it associates with that…


The importance of the correct wording of goods and services when applying for a trademark. BIMBO vs. VICKY FOODS

Background to the dispute On 14 June 2018, Hijos de Antonio Juan, S. L., filed an application for EU trade mark registration before the European Union Intellectual Property Office (EUIPO). The trade mark in respect of which registration was sought is the word sign DONAS DULCESOL for various foodstuffs, including pastry and confectionery products; pastries; biscuits; brioches and cakes. The trade mark application was published in the Trade Marks Bulletin of the European Union No 150/2018 of 9…


To what extent does the existence of employment relationship between the parties preclude or eliminate the possibility of recognizing co-authorship? Negishi v. Antonio De Felipe

Background of the case On 7 October 2016, the artist Fumiko Negishi brought an action before the Commercial Court seeking a declaration of authorship and, in the alternative, co-authorship of two hundred and twenty-one works created together with the artist Antonio De Felipe, her employer. Madrid Commercial Court no. 3 handed down a judgment on 16 January 2019, in which it declared that the artist, Antonio De Felipe, was the sole author of the two hundred and twenty-one pictorial works, as…


Guerlains’s three-dimensional trademark is is unusual for its type of goods and differs from any other shape on the market

BACKGROUND OF THE CASE On 17 September 2018 Guerlain applied for registration as a European trade mark of a three-dimensional sign for Class 3, 'lipsticks'. On 21 August 2019, the examiner refused registration on the grounds of lack of distinctiveness of the mark. This decision was appealed by Guerlain, however, on 2 June 2020 the First Board of Appeal of the EUIPO dismissed the appeal and upheld the examiner's decision finding the lack of distinctiveness of the mark applied for. The Office…


The sound of a can being opened cannot be registered as a sound mark

Background of the case On 6 June 2018, the German company, Ardagh Metal Beverage Holdings GmbH & Co KG, filed an application for registration of a trade mark with the European Union Intellectual Property Office. The mark in respect of which registration was sought is the sound sign reminiscent of the sound produced when a beverage can is opened, followed by a silence of about one second and a fizzing sound of about nine seconds. Providing an audio file when submitting the application for…


Distinctiveness and reputation of the contested trademark are not relevant when assessing likelihood of confusion. Movistar v. Moviestar

      BACKGROUND OF THE CASE On 24 February 2015 Telefonica applied for the registration of the trademark “MOVISTAR SERIES” for Classes 35, 38 and 41. However, on 16 June 2015 Heinrich Bauer Verlag KG filed an opposition on behalf of an earlier German trade mark “MovieStar”. On 30 September 2020, the Opposition Division upheld the opposition. Against this decision, Telefonica filed an appeal on 24 November 2020. DECISION OF THE FOURTH BOARD OF APPEAL The Board of Appeal found…


The General Court rules on procedural bad faith. The MONOPOLY CASE.

Background of the case On 30 April 2010, the appellant, Hasbro, Inc. filed an EUTM application of the word mark MONOPOLY, in classes 9, 16, 28 and 41, being granted in 2011 (EUTM 9071961). In 2014, the toy company Kreativni Događaji, filed an invalidity action, claiming that Hasbro, at the time of filing the EUTM, was already the owner of three other EU word marks MONOPOLY for the same goods and services as the prior marks. It was claimed that the US toy manufacturer intended, with this latest…


Celebrities names should be taken as a whole when they do so artistically. Miley Cyrus v. Cyrus

BACKGROUND OF THE CASE On 21 April 2014, the applicant Smiley Miley Inc. filed an application for registration of an EUTM for the word sign “MILEY CYRUS”, in regards to Classes 9, 16, 28 and 41. On 14 September 2014, Cyrus Trademark Ltd filed a notice of opposition against the application, based on a prior EUTM registered for Classes 9 and 20. On 30 October 2018 the Opposition Division partially upheld the opposition as found that there was a likelihood of confusion between the marks in…


YouTube only infringes copyright if it contributes towards the public accessing illegal content on the platform.

Background of the case In the dispute which gave rise to the first case (C-682/18), in 2008, Frank Peterson, a music producer, sued YouTube and its legal representative, Google, before the German courts in relation to the posting online on YouTube of several phonograms in which he claimed to hold various rights. In the dispute which gave rise to the second case (C-683/18), in 2013, the publisher, Elsevier, brought an action against Cyando AG concerning the making available online, on its file…