The European Commission confirmed the Irish whiskey status as a protected European Geographical indication. The scope of protection covers different variations of this whiskey such as malt Irish whiskey, pot still Irish whiskey, grain Irish whiskey, and blended Irish whiskey.
Irish whiskey has been known since the 6th Century. In the 19 Century, its production rose significantly and in the 20 Century, it became worldwide known.
In the future, this whiskey will be produced only on the territory of Irland under strict requirements and approved methods.
This is a strategic step for the Irish Whiskey Association because it gives an opportunity for legal protection against unfair competition and infringements. What’s more, the protection of this Geographical indication will be included in future trade negotiations between The EU and third parties which by itself is crucial for the Association taking into account its global sells.
The EU Council has approved the DSM Directive. You can see how every Member State voted below:
The next step is the transposition of this Directive into the national legislation of every EU Member State, which has to be done within 24 months.
Source: IP Kat.
The English High Court has dismissed an appeal from Trump International company (owned by German national Michael Gleissner) against the UKIPO decision to refuse registration as a trademark for ‘Trump TV’ in classes 38 and 41.
The US company DDTM Operations, which manages Donald Trump’s IP portfolio, filed an opposition against this mark based on alleged bad faith application. According to DDTM Operations, this trademark tries to take advantages from the reputation of the US President.
The UKIPO agreed with this claim and refused the application taking into account the Gleissner’s previous attempt to register similar signs.
The Court upheld this decision concluding that the applicant failed to give any reasonable arguments to support an eventual bona fide nature of its application.
The General Court of the European Union has ruled in the case T-611/17 All Star (Converse) v EUIPO – Carrefour Hypermarchés. The case concerns the following already registered figurative European trademark for classes 17, 25,35:
Against this mark, an application for a declaration of invalidity was filed by the French company Carrefour based on Article 52(1)(a) EUTMR and Article 7(1)(b) and (e)(ii) and (iii) EUTMR.
EUIPO invalidated the trademark at hand concluding that it is not possible for consumers to perceive it as a sign for trade origin. According to the Office, the practice of using simple geometric shapes for soles are widespread, as can be seen for many examples:
Consumers will look on them as something that will help them to walk easily, comfortably or securely but not as a sign for trade origin.
Although the Office made some mistakes when it comes to the scope of goods and services for which this invalidation is applicable (corrected after that), the General Court confirmed this decision in its entirety.
The EUIPO decision is accessible here.
Tom Ekeberg (Zacco) published an interesting story for Lexology regarding a trademark dispute between Coca Cola and the Norwegian beverage producer OM, which tried to use the trademark JALLASPRITE. Coca Cola complained about such use and as a result, OM replaced its mark with JallaXXXXXX.
However, even with that outcome, Coca Cola initiated a lawsuit claiming that with XXXXXX part of the mark OM was trying to take advantages of SPRITE trademark well-known status amongst the consumers. The reason for this is the fact that according to the US company most of the consumers will understand that XXXXX is a replacement of SPRITE bearing in mind the dispute between the companies.
According to the Court’s decision, when it comes to JALLASPRITE there is no need for a temporary injunction due to the fact that OM took all necessary steps to discontinue the use of the sign at hand.
With regard to JallaXXXXXX, however, the court supports the Coca Cola’s position because OM did their best to communicate amongst Norwegian consumers that XXXXXX is a replacement of SPRITE as a consequence of the US company’s legal proceeding against them. In that way, OM tried to take unfair marketing advantages of the situation. This creates a clear connection between SPRITE and JallaXXXXXX as brands.
The well-known energy drink producer Monster Energy lost an interesting opposition against the following UK trademark application in class 32 (beers, ales, stouts; low-alcohol beers; non-alcoholic and de-alcoholized cider, perry and beers; syrups and preparations for making any of these aforesaid; excluding energy drinks):
Against this mark, Monster invoked several earlier European trademarks in class 32 (Non-alcoholic beverages; beer):
The UKIPO dismissed the opposition internally. The reason for this was the lack of possibility for consumer confusion. According to the Office, both signs are visually and conceptually different. While in the case of the earlier mark there is a pair of legs, the earlier signs represent a scratch created by an animal. Although both can be viewed as the letter M, the differences between them are enough in order to escape consumer confusion even though the goods are similar due to their nature.
The full text of the decision can be found here.
Adidas won an opposition against the following application for a figurative trademark, applied for Class 25 by a Chinese company:
Against this sign, Addidas opposed its following earlier national trademark in Japan in Class 25 too:
According to the German producer, both signs are confusingly similar because their visual elements create a similar impression in consumers. What’s more, Adidas’s mark has a reputation which increases, even more, the risk of confusion.
The Opposition Board coalesce with Adidas concluding that there is a possibility for consumer confusion because both signs are visually similar for identical goods and all of that is supported by the earlier trademark’s reputation.
Source: Masaki Mikami, MARKS IP LAW FIRM (JAPAN)