Chile won a dispute against Pery for the term PISCO

chile-970444_960_720The Chilean vineyard Sociedad Anónima Viña Santa Rita won a dispute before the UK patent office regarding its following trademark for class 33 that contains the word PISCO:

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The Peruvian IP office objected to this registration claiming that only producers from Peru can use the term PISCO to label their products in particular wine.

According to the Chilean vineyard, this wasn’t the case due to the fact that wine under the same name had been producing in Chily for centuries.

The UKIPO ruled that in the case at hand there was no risk for consumer confusion because it was highly unlikely for them to connect the term PISCO only with Pery. In addition, taking into account the whole mark the likelihood of confusion was even smaller.

Similar disputes between Chile and Pery exist in India and Australia too.

Source: WIPR.

BIO cannot be registered as an EU trademark

environmental-protection-683437_1280The Board of Appeal of the EUIPO has ruled in case  R1507/2019-2, which concerns an attempt for registration of the following EU trademark for classes 3 and 5:

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EUIPO refused to register the mark based on absolute grounds, Article 7(1)(b) EUTMR, descriptiveness, and lack of distinctiveness for the goods in the aforementioned classes.

The word BIO means ‘biological, organic’  and cannot serve as a source of trade origin.

The Board upheld this decision. The fact that the word BIO is displayed with colors and graphical elements is not enough to overcome the weakness of the sign because alone or in combination these additional elements are not capable to create the necessary distinctiveness.

Source: Alicante news.

New requirements for trademark filing in the US

flag-1291945_1920Marques Class 46 reports about new requirements by the USPTO in cases of filing trademark applications. From now on, every application has to contain the applicant’s email address. It doesn’t matter whether it is filed by industrial property representative or trademark attorney, the owner’s mail has to be mentioned in order for the mark to receive a filing date.

Another important announcement is the fact that in the case of specimens submitted for the purpose of proving trademark use in the US, all of them has to show not only the brand or its label, but as they are attached to the product itself, the image of which can represent a specimen. Otherwise, it is possible for specimens to be rejected by the Office.

South Africa joins the Madrid Protocol soon

south-africa-1184103_1920Marques Class 46  announced that South Africa is on its way to join the Madrid Protocol for international registration of trademarks. The accession was approved by the Parliament and now is waiting for such approval by the President too.

As it is well-known, the Madrid System allows the international filing of trademarks based on a single application and fee. This news is a great relief for all foreign businesses that operate in South Africa or want to do that because they will be able to protect their trademarks easily.

Why searching for registered trademarks is crucial for every business nowadays?

laptop-3087585_1920As it is well-known in order to be distinguished and successful every business needs a good brand name. However, the brand-building process is not the only thing that has to be bear in mind when you launch a new mark in the market.

One crucial moment is whether your new brand name can infringe someone else’s already registered trademarks.

This is a situation when your brand name is identical or similar to a registered mark for identical or similar goods and services.

The logical question here is to what extent such a conflict can arise. The brief answer is that this is highly possible especially in the current global market where there are millions of registered signs all over the world.

If such a scenario happens the consequences could be quite negative. The first aftermath is the fact that when you applied for registration of your brand name it can face opposition by the owners of early registered similar signs.

Another, even a more daunting result could be a lawsuit for infringement of an already registered trademark.

In all cases, this could mean ceasing the trademark use and choosing a new brand name that will require new investments, etc.

In light of this one, unfortunately sometimes underestimated moment, is a preliminary trademark clearance search which to show whether you can use your mark or not.

You can do such a search for free using the official Patent Offices’ trademark databases.

However, to use them correctly you need to know some detail for trademark protection and how these database work.

In that regard, e new Udemy course has been published recently, which explains how you can conduct a trademark search on your own. You can assess the course from here, which by the way is on promotion with a 93% discount.

Coming your way

MIM is similar to MUMM according to the General Court of the EU

gavel-3577254_1920The General Court of the European Union has ruled in T‑589/18 Vins el Cep, SL v EUIPO. The case concerns an attempt for registration of the following EU trademark in class 33 –  Alcoholic beverages (except beer).

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Against this mark, an opposition was filed based on earlier marks MM, MUMM and the following combined mark, all for class 33:

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The EUIPO upheld the opposition concluding that there is a risk for consumer confusion between the signs. The dominant element in the later mark was MIM, which was similar to MM and MUMM at the beginning and end of the words.

Visually and phonetically the marks at hand were similar too. Conceptually, there was no similarity because the word MUMM meant ‘courage’ in German.

The word part NATURA in the mark applied for, had secondary importance so it wasn’t able to make the difference.

Taking into account the identical goods in class 33, the Office accepted that there is a risk for consumer confusion.

The decision was upheld by the General court.

Keep calm – no change regarding EU marks and designs after approval of the Brexit agreement

brexit-4011711_1920The 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.