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    IP news update 2018 – ed. 1 Trademarks

    • Trademarks

    Renate Pouw

    European and Benelux trademark attorney | Partner

    This is the first trademark news update of 2018.

    In this edition we provide you with a selection of recent news, including changes to the EU trademark practice, an update on the International trademark registration system, case law on geographical names and origin, coexistence & confusion, distinctiveness, and more.

    Legal

    EU Trade Mark practice. In our previous update we already announced Changes to EU Trade Mark Practice which entered into force in October 2017. For those who might not have all the changes on their mind, we herewith provide a short recap.

    1. Removal of the Graphical Representation Requirement: EUIPO opens the door for more non-traditional Trademarks by removing the formal requirement of submission of a graphical representation. A proper representation of the mark is necessary clearly defining what protection you are seeking. Multiple carriers are allowed, including MP3 files.

    2. Introduction of EU Certification Marks: Certification marks are a new kind of trade mark at EU level, as species of Collective marks. In essence, a EU Certification mark relates to the guarantee of specific characteristics of the relevant goods and services. An important characteristic of the Certification Mark is the Regulations of use that needs to contain the characteristics of the goods or services to be certified; the conditions governing the use of the certification mark; the testing and supervision measures to be applied by the certification mark owner.

    3. Acquired Distinctiveness as a Subsidiary Claim: Applicants will have the possibility of invoking the argument of Acquired Distinctiveness as a subsidiary or alternative claim, either at the start of the application process or later. The advantage to of a subsidiary claim is that it only crystallises if there is a negative final decision on inherent distinctiveness. This will mean that users do not need to incur the expense of gathering and presenting evidence of use unless it is necessary.

    The International Trademark registration system currently has 100 members, covering 116 countries. These members represent more than 80% of the world trade.
    The system continues to attract new countries, among which:
    Thailand from 07 November 2017,
    Indonesia from 02 January 2018,
    Upcoming: Malta, Canada, Jordan, Saudi Arabia, South Africa

    CJEU Case law

    Use of geographical names in Trademarks. Case T-878/16 of 6 October 2017. Article 7(1)(c) of EU TM Regulation does not preclude the registration of geographical names provide these are unknown to the relevant class of persons - or at least unknown as the designation of a geo-graphical location. The word ‘karelia’ however is known by the relevant public as the name of the Karelia region, partially situated in Finland and known for its fuels and oils, and therefore is descriptive in that it refers to that region as being their geographical origin. Judgment

    Coexistence – confusion. CJEU, Ornua v Tindale. The fact that EU trade mark and national mark peacefully coexist in part of the European Union does not allow the conclusion that in another part of the European Union, where peaceful coexistence between that EU trade mark and the sign identical to that national mark is absent, there is no likelihood of confusion. Judgment

    High quality – Geographical origin. CJEU, Moreno Marin v Abadia Retuerta. A trade mark such as LA MILLA DE ORO – which refers to a good or service with a high degree of value which is abundantly present in a single place – cannot constitute an indication of geographical origin. To indicate a geographical origin that sign must be accompanied by a name designating a geographical place so that the actual physical space may be identified. Judgment

    National case law


    Portrait can be a Trademark. Chamber of Appeal EUIPO, Maartje Verhoef. 16 November 2017. Maartje Verhoef applied for a registration of an EUTM in multiple classes including make-up, photography, jewelry, magazines, clothing, lingerie and bags, etc. The Chamber of Appeal rules that the sign can serve as a means of identification of the origin of the goods and services in question, and fulfils its function as a trademark. After all, nothing in the photograph can be regarded as a characteristic of the goods and services in question, and the sign does not depend on the appearance of the indicated (designated) goods. Judgment

    Indication of origin. Opinion A-G, Neuschwanstein. Distinctiveness of museum website “NEUSCHWANSTEIN”. The A-G accepts the Court of Appeal's view that the name NEUSCHWANSTEIN cannot be an indication of origin for the goods and services designated by it. The castle of Neuschwanstein is not known for the souvenir items it sells or the services it offers. The place of sale of a product does not describe its properties, qualities or other characteristics and consequently the relevant public cannot assign properties, qualities or other characteristics associated with a product, based on the fact that the merchandise was purchased at a certain geographical location. Opinion

    This is different from the situation in which the relevant public can establish such a relationship between a product and a geographic location where the product is manufactured, by thinking that the true properties, qualities or other characteristics exist because it has been manufactured or conceived and designed in a particular place. Eg. porcelain from Limoges.

    Decoration on clothing or, Trademark Infringement? The Hague Court, Adidas & HM. Work Out” fitness clothing of H&M from 1997 infringes three-stripe trademark of Adidas. Three stipe motif has acquired strong degree of distinctiveness and can be considered a well-known Trademark according to art 2.20 par 1 sub c BVIE: this has been supported sufficiently with catalogs, sponsor activities, sales figures, marketing budget and market surveys. Likelihood of confusion: in view of high degree of similarity with the three stripe motive, the strong degree of distinctiveness of the trademark and identity of products. Confusion on origin in market surveys, 24 % and 34%, significant. Judgment

    This article is for information and discussion only, and should not be taken as a source of legal advice.

    Renate Pouw

    European and Benelux trademark attorney | Partner

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    IP news update 2018 – ed. 1 Trademarks

    • Trademarks