The European Intellectual Property Office (EUIPO) issued a press release in which clarifies the situation with the approved Withdrawal Agreement for Brexit by the European Parliament.
EUIPO stated that there will be no change regarding the EU trademarks and designs and their validity on the territory of the UK by the end of 2020. This includes the possibility of citing the national marks in procedures before the Office as well as the work of British Industrial property representatives.
For more information here.
The UK based owner of a small business Tiffany Parmar applied for a UK trademark “Cotswold Lashes by Tiffany” in 2018. The scope of the application covers the following classes: 3 (cosmetics), 41 (education and beauty school services) and 44 (hygienic and beauty care services).
Against this application, the US company Tiffany&Co filed an opposition based on a family of early registered trademarks Tiffany for classes 3, 14 and 41. In addition, a trademark with reputation was claimed due to the fact that Tiffany&Co has been operating in the UK since 1868 making sales for millions of dollars every year.
The UKIPO upheld the opposition with the argument that there is a serious risk for consumer confusion between the signs. The claimed reputation was not taken into consideration, however, because according to the Office, it was stated for goods that are dissimilar with those in the later mark.
The case at hand shows clearly that it is not always possible for individuals to register their personal names as a trademark if they collide with an already established and well-known trademark.
The European Patent Office expressed its readiness to issue the so-called Unitary EU patents.
The Unitary Patent is a patent granted by the EPO for which unitary effect can be registered with the EPO for the territory of the participating EU Member States. This patent is crucial for competitiveness, growth, and innovation in Europe.
For the time being, the Unitary Patent is not officially in action because of a lawsuit before the German Supreme Court, which has to decide whether this patent protection is in line with the German constitution.
Another uncertainty is what will happen with the UK after Brexit. The problem arises from the fact that the British government is against any possibilities where the European Court can have jurisdiction over the UK even in the case of the Unitary Patent.
For more information here.
As it is well-known the current changes in the European legislation eliminated the need for graphical representation of trademark in its application form.
This by itself opens widely the door for new types of trademarks unseen so far especially when we take into consideration all new technologies available.
Of course, these potential trademarks will have to fulfill all general requirements for trademark protection. Nevertheless, many companies and individuals will be happy when it comes to this possibility because they will be able to protect more innovative signs for trade origin which has been impossible so far.
Some examples that have started to appear in different countries are:
- A UK motion trademark by Toshiba – here or
- A Google EU hologram trademark – here.
It is highly likely that we will see even more creative trademark forms in the foreseeable future.
The financial company Monzo withdrawn its UK color trademark application for Hot Coral Pantone 805 C. Monzo uses this color for its bank cards.
Most likely that happened because the company had failed to register identical European trademark earlier. The Board of Appeal of the EUIPO confirmed that Pantone 805 C cannot represent a trademark because of a lack of distinctiveness.
Most consumers will perceive the color only as a decorative element, not as a sign for trade origin.
In a case like that, the onliest chance for the applicant is to prove that the sign has acquired secondary distinctiveness as a result of intense market use. However, that task can be really challenging especially when it comes to one color alone.
Bentley Motors lost a lawsuit regarding the option to use its Bentley trademarks on clothes.
The case concerns a dispute with almost 20 years of history, where another British company Bentley Clothing has tried to stop this use.
Bentley Clothing is a company that has been selling clothes with the Bentley since 1962, and is the owner of several Bentley for class 25.
On the other side, Bentley Motors in an attempt to expand its merchandising line started to offer beanie hats and scarfs with its brand.
According to the company, by doing that Bentley Motors infringes on the company’s trademark rights.
The English High Court upheld this accusation stating that both marks are very similar due to the leading word element Bentley.
This means that Bentley Motors will have either to stop using the mark for clothes or eventually to sign an agreement with Bentley Clothing.
Amazon won a dispute before the UK Patent Office against a word trademark application for “SPARKK” in class 9 for goods including computer application software, mobile applications, and software for social networking services.
The opposition was based on the earlier trademark “Amazon Spark” for the same class of goods.
The UKIPO upheld the opposition stating that although Amazon is the first word in the earlier mark, Spark has a roughly equal contribution to the overall impression of the sign.
What’s more, the additional letter K in the later mark is not enough to overcome the possible consumer confusion. This is supported by the fact that Amazon is a distinctive and well-known mark and because of this consumers may think that SPARKK is just another sub-brand related to “Amazon Spark” .