Advertising without actually selling can be considered as use of the trade mark. IKONIK HOTEL case

BACKGROUND OF THE CASE The applicant High Tech Hotels brought an action against Agincourt seeking a declaration of revocation of the trade mark IKONIK HOTELS, registered for classes 35 and 43, alleging lack of genuine use of the trade mark by the proprietor and having a legitimate interest given that the defendant had opposed its application for the European trade mark ICON HOTELS. The defendant argued that the trade mark was in use, since a hotel was being built in Puebla, Mexico. The website…


The modular design of parts and the protection granted by the community design. Lego case.

Background of the case On 2 February 2010, the applicant, Lego A/S, filed an application for a registered Community design at EUIPO, which was published in the Community Designs Bulletin N. 32/2010 of 11 February 2010, as follows: On 8 December 2016, the German toy company Delta Sport Handelskontor GmbH filed an application for a declaration of invalidity claiming that all the appearance features of the product concerned by the contested design were dictated solely by the technical function of…


Happy World Intellectual Property Day! 

Happy World Intellectual Property Day! World Intellectual Property Day 2021 shines a light on the critical role of small and medium-sized enterprises (SMEs) in the economy and how they can use intellectual propertyrights to build stronger, more competitive and resilient businesses. #worldIPday


The consideration of bad faith in imposing the costs of the proceedings. Industrial designs invalidity proceedings. Desigual case.

Background of the case In January 2015 it was found that in the defendant ´s premises, the company SARA BAG SL, was selling bags reproducing prints from DESIGUAL products which are protected under intellectual and industrial property rights. Subsequently, a criminal complaint was filed and the infringing goods were seized following Preliminary Proceedings in the Instruction Court 4 of Fuenlabrada. Afterwards, the defendant applied for the industrial design nº 509.989, which replicates the…


Are the heirs of Antonio Gaudi entitled to claim as prior rights the name, surname and image of the latter? The Trademark Act 17/2001 applied by the EUIPO Board of Appeal

Background of the case On 24 March 2016, Gaudí BCN Projects S.L. fileD the following EUTM: In order to distinguish services in class 35 and class 42. Filing, the Junta Constructora del Temple Expiatori de la Sagrada Familia, an application for invalidity, on 26 November 2018 based on the following earlier rights: Spanish Trade Mark ANTONI GAUDI; Spanish Trademark  European Union trade mark MUSEU GAUDI, Right to the name ANTONI GAUDI and Right to the image ANTONI GAUDI. On 14 April 2020, the…


Principle of specialty and scope of protection of trademarks with reputation. The Puma Case

Background of the case On 1 June 2017 CAMäleon Produktionsautomatisierung GmbH filed an application for the registration of an EU trade mark for the word sign PUMA-System in Classes 7, 9, 16 and 42. Following this application, Puma SE filed an opposition on 24 October 2017 based on two EUTMs that contained the term PUMA in Classes 18, 25 and 28 relying on the reputation that both earlier marks have in the European Union, thus alleging the risk of infringement of Art.8.5 of the EU Trade Mark…


The use of a generic term in a domain name. Trademark infringement or acts of unfair competition. TAXI PALAMOS

Background of the case On 7 November 2019, the plaintiff filed a lawsuit based on a trademark infringement action as well as unfair competition acts. Hereinafter, and as a response to the lawsuit, the defendant opposed in its entirety to all the claims and in addition, filed a counterclaim requesting the nullity of the trademark based on bat faith. The disputed facts are the following: the defendant and counterclaimant acquired the domain name taxispalamos.es, being the plaintiff the owner of…


Ranking WTR 1000

World Trademark Review has appointed Cristina Hernández Martí as recommended individual for trademark enforcement and litigation in Spain. The WTR 1000 ranking highlights that she has “a keen understanding of the fashion industry, where her experience in designing portfolio strategies and identifying potential risks is beyond exemplary”. Ir a WTR ➞


Trade marks and freedom of expression in US and EU law

Cristina Hernandez-Marti Perez has recently published an article in European Intellectual Property Review in relation to trademarks and freedom of expression. This article compares the regulatory framework under US and European trade mark law in relation to the absolute prohibition grounds of registration that are contrary to the public order or morality. Even though the legal framework concerning freedom of expression and absolute prohibitions does not differ substantially, there are…


The descriptive character of the Trademark EL CLASICO

Background of the case. On February 17, 2017, the National Professional Football League filed an application for the following International Trademark with the EUIPO for Class 41. Following the analysis of the application, the EUIPO considered that it was to be refused both at first instance and finally by decision of the Board of Appeal in October 2019 on the grounds that the mark was considered to be non-distinctive and descriptive in relation to the services applied. In particular, the…