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DeutschThe shape variation of a common product isn’t a distinctive element for a trade mark- Three-dimensional trademark consisting of a ring
The European Union trade mark nº 18948203 consists of a three-dimensional mark, represented by a white background upon which six silver rings with an irregular shape are displayed. On the 8 of November 2023, the mentioned trade mark was applied for in class 14 ( jewellery). However, on the 29 of April 2024, the application was refused pursuant to Article 7(1)(b) EUTMR regarding the devoid of distinctive character. The decision was based on the appearance of the represented rings, the examiner…
The importance of the social context in order to establish the suitability of a EU trademark regarding the public policy and the accepted principles of morality
On May 5 2020, Turner Broadcasting System Europe Limited sought to register theword mark “MARICON PERDIDO” (Lost queer) as a European Union trade mark(MUE018234526) for the goods and services in class 9 and 41 regarding audio visual recordings and Entertainment services. However, the trade mark applied for wasentirely refused by the examiner on the grounds of Article 7(1)(f) EUTM by whichtrade marks that are contrary to public policy or to the accepted principles of morality in the EU shall not…
From December 1st to 4th, we actively participated in the XXIV ASIPI Conference held in the vibrant city of Panama.
From December 1st to 4th, we actively participated in the XXIV ASIPI Conference held in the vibrant city of Panama. During the event, key topics were addressed such as: dispute resolution in advertising matters by private organizations in Latin America and Europe; the use of copyright in trademark processes; and unfair competition as a residual action against the infringement of IP rights, among others. Additionally, the Conference provided the perfect setting for the meetings of the Working…
Risk of Confusion in Marks with Enhanced Distinctiveness - SHOPEE vs. SHOPIFY
This case addresses the recent decision of the EUIPO Second Board of Appeal in the opposition filed by the brand SHOPIFY against the Trade Mark Shopee. The decision is particularly relevant as it deals with two marks featuring weak descriptive elements. In its initial decision on January 30, 2024, the Opposition Division rejected the opposition against the registration of the SHOPEE mark. The opposition was dismissed as the division found that the risk of confusion was limited, given that the…
Analysis of the Distinctiveness of the Collective Mark "Morcilla de Burgos": From Descriptive to Distinctive
On October 7, 2013, the Association of Producers of Morcilla de Burgos applied to register the collective mark "MORCILLA DE BURGOS," characterized by the colors black, gray, and red, to distinguish blood sausages (“Morcilla”) from the geographic region of Burgos, in the Spanish country. The IGP Morcilla de Burgos Association filed an invalidity action against all goods and services of the EUTM holder, arguing that the term unequivocally describes the meat products and their geographical…
The reversed order of the same words as a differentiating factor: the case Betsport v.s Sportbet
The European Union trade mark No 18736246 named Sportbet was applied for in class 41 regarding gambling services. In response, Circus Belgium S.A., owners of the trade mark Betsport, filed an opposition to the registration under Article 8(1)(b) of the EUTMR. However, the opposition was rejected in its entirety as no relevant similarity was found between the two signs despite the fact that the services offered were identical. The opponent appealed against that decision made by the Opposition…
Invalidity Proceedings: Unfair Exploitation of Distinctiveness
On December 10, 2020, the applicant, Monster Energy Co. (hereinafter, "Monster"), filed an invalidity action before the EUIPO against the trademark "Insomnia Energy," which was registered in Class 32, covering energy drinks. Monster argued that the invalidity request was based on the unfair exploitation of the fame of its mark. However, the Cancellation Division rejected the request, concluding that there was no likelihood of confusionbetween the conflicting marks and that the degree of…
Protection of Computer Programs in the EU: Limitations on Modifying Variable Data
The Court of Justice of the EU recently issued a ruling regarding the scope of legal protection for computer programs under Directive 2009/24/EC, which lays the foundation for copyright in software within the EU. This question was raised by the Bundesgerichtshof (Federal Supreme Court of Civil and Criminal Matters, Germany). In this case, Sony Computer Entertainment Europe Ltd (hereinafter, Sony) sued Datel Design and Development Ltd (hereinafter, Datel), arguing that Datel had modified…
AIJA Seminar in Málaga: New Technologies: Is IP/TMT and Antitrust Law Future Proof?
From October 24 to 26, 2024, AIJA held a seminar in Málaga, organized by the Intellectual Property, Technology, Media, and Telecommunications (IPTMT) and Antitrust Commissions. The conference, under the theme "New technologies: Is IP/TMT and Antitrust law future proof?", attracted lawyers and experts from around the world to discuss the future of these areas of law amid rapid technological advances. One of the seminar's highlights was the panel "Registered designs in transformation: When chairs…
Pattern mark. Lack of distinctiveness
In the resolution dated September 13, 2024, the EUIPO rejected the European Union Trademark No. 18 969 849, based on Article 7(1)(b) EUTMR, on the grounds that it lacked distinctiveness. The applicant argued that the trademark had strong distinctive character, supported by technical and psychological studies presented that highlighted the distinctiveness of the mark. Among others, the following analyses were submitted: "Graphical Analysis of the Hestern Pattern" "Psychological Analysis of…