Monaco joins TMView

port-yachts-monaco-luxuryEUIPO reports about the accession of Monaco to the general database for trademarks TMView. In that way, another 16 000 trademarks are added to this database, which makes the total number of accessible signs to 52 million.

For more information here.

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The Polo/Lauren Company won a case in The EU regarding its famous logo

polo-1039337_960_720.jpgThe Board of Appeal of the EUIPO has ruled in case R 1272/2018-5 STYLE & TASTE, S.L. v The Polo/Lauren Company L.P., which concerns an invalidation procedure against the following European trademark registered in 2005 for classes 9, 20, 24 and 25:

rlp

The ground for this invalidation is the following earlier registered Spanish industrial designs:

spto

The EUIPO dismissed the request because:

  • by not submitting the translation of the registered certificate for the earlier Spanish industrial design, the cancellation applicant did not prove the validity and scope of protection of this earlier right,
  • mere reference to national law would not be considered sufficient, and
  • the cancellation applicant did not submit the necessary national legislation in force and did not put forward a cogent line of argument as to why it would succeed under the specific national law in preventing the use of the contested EUTM.

The decision was appealed.

According to the the Board of Appeal, the applicant failed to prove its rights and to submit the necessary argumentation in order to invalidate the trademark at hand. What’s more, after some inspection, it is turned out that the aforementioned designs are not valid anymore due to a lack of renewal.

This case comes to show how essential is the good preparation and implementation for initiating such procedures before the Patent Offices around the world.

Source: IPKat.

China introduced a new IP Court

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China introduced a new intellectual property court on 01.01.2019. The main aim of this new court, which is a part of the Supreme People’s Court, is to bring more quality and efficiency regarding all sorts of intellectual property desputes in the country and in that way to send a positive signal to all local and foreign market players.

The new court will be responsible for:

  • Civil law cases after the first instance
    That includes: Invention patent, utility model patent, layout designs for integrated circuits, technical inventions, computer software, new plant varieties
  • Administrative cases at first instance concerning more technical issues, including designs and monopoly disputes
  • Protest cases after first instance appeal cases which have entered into force after first instance independently of the civil cases or administrative cases mentioned above.

For more information here.

Source: Dr. Meyer-Dulheuer & Partners LLP.

Image: David Besh/Pexels

McDonald’s lost a Big Mac dispute in the EU

pexels-photo-1600727McDonald ’s lost a trademark dispute with the Irish food chain Supermac’s regarding its European trademark ‘Big Mac’. The Irish company attacked this mark with a request for cancelation based on a lack of genuine use on the territory of EU.

According to the EU law, if the trademark owner doesn’t use its mark for a period of 5 years before the cancelation request, he can lose the rights over its mark unless evidence for genuine use is submitted.

McDonald’s did exactly this, submitting affidavits with sales figures under the grand as well as brochures and printouts of the company’s websites and a Wikipedia page providing information on the Big Mac.

According to the EUIPO, however, these materials don’t show a real use of the aforementioned trademark. First of all, affidavits are signed by McDonald ’s employees which give them less weight because they are not independent evidence.

Regarding the brochures, there was no information on how they were used and whether they reached the consumers. The printouts from the company’s site can’t show any interactions with the consumers or any sales.

“Wikipedia entries cannot be considered as a reliable source of information”, as they can be edited by the website’s users, the ruling said.

It is highly likely that McDonald ’s will appeal this decision. Nevertheless, this case clearly shows the need for thorough preparation when it comes to gathering evidence for such trademark disputes because otherwise the trademark rights can be threatened.

Source: WIPR.

Lithuania introduced some important changes in its trademark legislation

lithuania-966145_960_720.jpgAs of 01.01.2019, some important changes have been introduced in the trademark law in Lithuania, which adopt provisions from the EU Trademark Directive 2015/2436.  The most essential of them are:

  • there is no more a requirement for graphical representation of a sign when it is applied for trademark protection;
  • an opposition system was introduced which means that the Patent Office will make an examination on absolute grounds, and after that, every interested party can file an opposition based on earlier rights;
  • certification marks are now possible for registration;
  • invalidation and cancelation of trademarks will be done by the Patent Office, and not only by the Court as before.
  • the trademark owner can stop goods labeled with his trademark to be transited across the country unless the person transporting the goods proves that the trademark owner is not entitled to prohibit the placing of those goods on the market in the country of final destination.
  • the fees for registration of trademarks have been increased. For example, the fee for new trademark application goes up from 138 euro to 180 euro for one class of goods and services.

For more information here.

Source: Marques Class 46.

 

 

 

Samoa joins The Madrid Protocol for international registration of trademarks

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WIPO informs about the Somoa accession to the Madrid Protocol for international registration of trademarks. In that way, the participating Member States become 103. According to the information Samoa will require individual fees for such marks as well as every license for an international trademark will have to be registered with the local Patent Office.

The Protocol will enter into force for the country on 04.03.2019.

For more information here.

Beats Electronics won a trademark case in the EU

pexels-photo-577769.jpegThe Board of Appeal of the EUIPO has ruled in a case regarding an application for the following European trademark applied for classes 9 (apparatus for recording, transmission or reproduction of sound or images), 35 (business management, business administration, market research services, export services), and 38 (telecommunication services, in particular mobile telephony, broadcasting of radio and television programmes):

beats1

Against this application, an opposition was filed by Beats Electronics based on the following earlier European trademarks for classes 9 (audio and video equipment including audio players, video players, media players, portable media players), 38 (providing online bulletin boards in the fields of media, music, video, film, book and television for the transmission of messages among users), and 41 (nightclub services, dance club services, provision of live entertainment and recorded entertainment) of the Nice Classification. EUTM 2 was for the same goods and services, with the addition of Class 42 (providing an interactive online network website, via electronic communication networks):

Initially, the EUIPO’s Opposition Division dismissed the opposition stating that there is no possibility for consumer confusion concerning both signs despite the identical and similar goods. The claim for trademarks with reputation by Beats Electronics was dismissed as not proved.

The decision was appealed and the Board of Appeal reversed it finding that the Opposition Division erred in its conclusions.

According to the the Board, both trademarks are similar and can create confusion amongst the consumers. The arguments behind this position were that both signs have similar visual elements as well as colors. The differences are not enough to overcome similarities. What’s more the earlier marks have a reputation on the market which was proved by the owner.

Source: Nedim Malovic, IPKat.