Trademark enforcement in Benelux

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LYDIAN published an interesting article for Lexology which discuss how you can enforce rights over a trademark in Benelux. The article covers the following:

  • Which courts are empowered to hear trademark disputes?
  • What actions can be taken against trademark infringement and what are the key features and requirements of each?
  • Who can file a trademark infringement action?
  • What is the usual timeframe for infringement actions?
  • What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
  • What remedies are available to owners of infringed marks? Are punitive damages allowed?
  • What customs enforcement measures are available to halt the import or export of infringing goods?
  • What defenses are available to infringers?

More information here.

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Google is not a generic term in the US

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ARS Technica UK reports an interesting story from the US where the Supreme Court refused to review a petition which asserts that the term “google” is too generic and therefore cannot be a trademark anymore.

According to that petition, the word Google has been widely used as a term for searching on internet. Due to that fact, this trademark is no more eligible to serve as a trade source.

The Federal court ruled in that case last year considering that although Google is used as e term describing the process of searching on internet, it is still a valid trademark because Google offers other products too and the word is connected with different goods and services. What’s more, we have a generic term when the name has become an “exclusive descriptor” that makes it difficult for competitors to compete unless they use that name, which is not the case with Google.

More information here.

Indonesia joins the Madrid Protocol for international registration of trademarks

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WIPO reports about the accession of Indonesia to the Madrid Protocol for international registration of trademarks. The Protocol will enter into force for the country on 02.01.2018, a date after which Indonesia can be designated in applications for international marks. In light of this Indonesia made some declarations:

– in accordance with Article 5(2)(b) of the Madrid Protocol, the time limit for a notification of refusal in respect of international registrations made under the Madrid Protocol will be 18 months; and

– in accordance with Article 8(7)(a) of the Madrid Protocol, the Government of the Republic of Indonesia, in connection with each international registration in which it is mentioned under Article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee.

More information here.

EcoSilver is eligible as a European trademark for precious metals

The Board of Appeal of EUIPO has issued an interesting decision in case R 362/2017-4 which concerns an attempt for registration of the following European trademark for the following classes:

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Class 6 – Common metals and their alloys; Metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; Safes; common metals;Ores.
Class 14 – Precious metals and their alloys; jewellery, precious stones; horological and chronometric instruments; precious metals.
Class 40 – Treatment of materials, namely metal coating; treatment of precious and common metals; treatment of alloys.

Against this mark, a refusal was issued based on absolute grounds for refusal Article 7(1)(b) and (c) EUTMR in conjunction with Article 7(2) EUTMR.

The Office considered that the sign was lack of distinctive character in connection with the abovementioned classes. The examiner pointed out that ‘SILVER’ is descriptive for precious metals whereas ‘ECO’ denoting ecology or ecological. The combination would be understood by the relevant public, made up of English-speaking end consumers and professionals, as the meaningful expression ‘ecological element’.

However, the EUIPO’s Board of Appeal overruled this decision. According to the Board, “the applied-for mark is a ‘neologism’ in the sense that in its combination it does not appear in dictionaries whereas each of its word elements do. For this type of marks, the general rule is that the mere combination of descriptive elements itself remains descriptive unless because of the unusual nature of the combination, the term concerned creates an overall impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts.”

The Board considers that the combination between Eco and Silver is distinctive enough because there is no particular understanding what exactly is eco silver. On top of that the presence of colors and graphics, including the human image, support distinctive character of the sign.

Source: Lexology.

 

Coca-Cola successfully defended its trademark in New Zeland

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Coca-Cola successfully defended its trademark for smoothies and foods in New Zeland. The case at hand concerns a New Zeland company under the name of Innocent Foods that offers different smoothies in its cafes using the same name.

Coca-Cola accused that company of trademark infringement of its earlier registered mark “Innocent” for juice and food.

The New Zeland company agreed to change its name although they consider the US company as a greedy.

The main problem in such situations, however, is the lack of searching for prior rights which can identify all previously registered trademarks and will save money and time for rebranding.

Source: WIPR.

Eminem won a lawsuit against a political party

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Eminem won a lawsuit against the New Zealand’s National Party regarding copyright infringement of his song “Lose Yourself”.

The case at hand concerns the fact that the National Party used in its election campaign a song called “Eminem Esque”  which resembled significantly the original “Lose Yourself”.

Because of this  Eight Mile Style and Martin Affiliated, representing Eminem, initiated a lawsuit in New Zeland for copyright infringement over the rights of the song.

According to the Court, there is an infringement due to the fact that the composer of  “Eminem Esque” was aware of the original track including bearing in mind the name of the latter song.

The Court order $412,896 considering the fact that the infringement happened for a limited period of time.

This case shows clearly one significant misunderstanding in case of attempts for using songs or music that try to resemble original one. Many people believe that if there is some changes in the music sheet this is enough to overcome any copyright claims and accusations. But that’s not always the case because copyright law provides the so-called derivative works. A derivative work is a new, original work that includes aspects of a preexisting, already copyrighted work. Also known as a “new version,” derivative works can include musical arrangements, motion pictures, art reproductions, sound recordings or translations. A derivative work can be created and used only after a consent by the author of the original work on which it is based.

Source: WIPR.