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DeutschGuerlains’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…
Geographical Indications – A tour around the world
Cristina Hernandez-Marti Perez participated as a speaker in the panel “GEOGRAPHIC INDICATIONS – A TOUR AROUND THE WORLD” organized by AIPF on July 22, 2021. She spoke mainly on the protection of geographical indications in Europe: the current regulation and recent court decisions which concretize the scope of the protection of Gis. https://aipf.com/event-4413141
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…
The inclusion of a Protected Designation of Origin as part of a trademark - Lar de Duero Case
Background of the case On 7 November 2017, the Spanish Patent and Trademark Office rejected the application for registration of trademark no. 3658229, with the distinctive sign "LAR DE DUERO" for "wines, all wines covered by the Ribera de Duero designation of origin". The Regulatory Council of the Designation of Origin Ribera del Duero lodged an appeal against this decision on 21 May 2018. This appeal was also rejected and, finally, an appeal for judicial review was lodged, with the Chamber…
There is a likelihood of confusion between the requested trade mark INCOCO and the registered trade mark COCO.
BACKGROUND OF THE CASE On 23 January 2014 Innovative Cosmetic Concepts LLC applied to the European Union for registration of the international trade mark 'INCOCO' (word mark), for Classes 3, 35 and 44. On 23 October of the same year Chanel filed a notice of opposition alleging likelihood of confusion with two earlier French marks under the word mark 'COCO', for the same Classes. On 27 November 2018, the Opposition Division upheld the opposition and the applicant filed an appeal against that…
Can colours be regarded as descriptive of the taste? “Sienna Selection” case
BACKGROUND OF THE CASE On 14 September 2018, the applicant Philip Morris Products filed an application for registration of an EU trade mark for the word sign “SIENNA SELECTION” for goods contained in Class 34. On 19 June 2019 the examiner refused the registration on grounds of Arts. 7.1 (b) and (c) of the Regulation on the European Union Trade Mark, for being non-distinctive and descriptive of the goods applied for. On 30 July 2019 the applicant lodged an appeal which was dismissed by the Fifth…