Brief IP news

briefs_1131. Opposition by an owner of a non-registered sign. For more information here.

2. Copyright: architect’s drawings. For more information here.

3. Are My Customer Lists a Trade Secret? For more information here.

Information from Intellectual Property Center at the UNWE. More information can be found here

Copyright over design for clothes in US

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The US Supreme Court ruled in the case STAR ATHLETICA, L.L.C. v. VARSITY BRANDS, INC., which in brief concerns clarification whether clothes design is copyright protectable.

As it is well-known there is no copyright over the so-called “useful article” objects having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. Examples are clothing, furniture, machinery, dinnerware, and lighting fixtures.

According to the court, even in this case copyright protection can be invoked but under some requirements:

  • the element can be perceived as a work of art separate from the useful article;
  • and the element would qualify as a protectable pictorial, graphic or sculptural work if imagined separately from the article of clothing (or other useful article).

In the particular case, the court considers that copyright over designs fixed on the clothes exist because the same designs could be transferred to another medium such as canvas in which respect it could be perceived as a separate piece of art.

More information here.

A problem for Adidas’ figurative EU trademark

EUIPO took a decision in case № № R 1515/2016-2 which concerns invalidation of the following EU trademark registered for Class 25  “clothing; footwear; headgear“.UntitledShoe Branding Europe BVBA sought to invalidate the mark based on  Article 52(1)(a) in conjunction with Article 7(1)(b) EUTMR, lack of distinctiveness.

EUIPO  upheld this request stating that as it is presented this three-striped mark was likely to go unnoticed by most consumers, taking into account that these three stripes could be used as decoration for the particular goods specified in the application.

Adidas submitted 12 000 pages with pieces of evidence that the mark was distinctive enough to serve as a trade origin sign.

EUIPO dismissed these materials as insufficient and not precise. For instance, EUIPO considered that the submitted examples showing the real use of the sign are different from the way in which it is registered because they show two black stripes only.

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The submitted surveys did not serve to establish acquired distinctiveness either because indicated a connection with other Adidas marks without assessing the separate distinctiveness of the three stripes figurative mark alone.

For more information here.

French Pocket trademarks stopped new EU application for Pocketbook

UntitledThe General Court ruled in case T-596/15 which regards an attempt for registration of an EU trademark POCKETBOOK for Class 9. Against this application, an opposition was filed based on earlier French trademarks for Classes 9, 16, 38 and 41 and domain pocket.fr.

EUIPO upheld this opposition in the light of the fact that the leading element between the signs is POCKET which although has low distinctive character regarding some of the goods and services, can create confusion among consumers.

In addition, ‘portable and handheld digital electronic devices’ are complementary to the data carriers and they can be sold in the same retail outlets. The ‘portable and handheld digital electronic devices’ are also complementary to the on-line publication services.

The Court upheld this decision.

Source: Alicante news.

Registration of trademarks in Germany

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Lexology published an interesting article by Tanja Hogh Holub and Tilmann Lührig which discusses the registration of German trademarks, some important facts and circumstances that need to be taken into account when someone wants to register a national mark in the county.

One interesting fact is that unregistered trademarks in Germany have similar protection as registered one but with some specifics. For instance, an unregistered trademark with a regional reputation has protection only within the relevant region. In this case, the trademark owner’s legal remedies are also limited only to that area and he can’t prohibit a third party’s use in outside that area.

In addition, certification trademarks are not subject to protection in Germany.

More information here.

 

 

Differences between iWear and InWear – an EU Court decision

eu-vat-action-surveyThe General court of EU ruled in case T‑622/14, which concerns an attempt for registration of an EU trademark IWEAR against which an opposition was been filed on the ground of an earlier mark INWEAR for Classes 18 and 25.

EUIPO and the Court upheld the opposition accepting the fact that there is a similarity between both signs which in turn can create confusion among the consumers in the light of the similar and identical goods.

According to the Court, the existing differences in the word order and the meaning of both marks cannot overcome the possibility for confusion due to the fact that for non-English speaking consumers these differences will be not understandable or even noted.

Brief IP news

briefs_1131. ASCAP press release: ASCAP Delivers Record-High 2016 Financial Results. For more information here.

2. Would Humanity Be Better Off Without Intellectual Property? For more information here.

3. IP and BREXIT: The facts. For more information here.

Information from Intellectual Property Center at the UNWE. More information can be found here