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DeutschBad faith in trademark registration proceedings. The Tesla case
On 4 November 2022, an application was filed requesting for a declaration of invalidity against EUTM 5838727 “TESLA” (word mark) for all of the goods covered by the EUTM, which belong to classes 12 and 25, regarding accessories for vehicles and clothing, among others. The reason for this application was based on the grounds of bad faith under art.59.1.b EUTMR. The applicant, the well-known electric vehicle company Tesla, Inc. argued that the registration of the trade mark is based on…
Hernández Martí Abogados is listed in the Bronze Firms category for trademark enforcement and litigation in Spain in the WTR 1000
Hernández Martí is lauded by patrons for its embodiment of a “360-degree approach to the IP experience”, owing to its “in depth knowledge of intellectual property rights, not only from a prosecution angle, but also a litigation and transactional one”. https://www.worldtrademarkreview.com/rankings/wtr-1000/profile/firm/hernandez-marti-abogados
Dr. Cristina Hernández-Marti Pérez is listed in the Silver Individuals category for trademark enforcement and litigation in Spain in the WTR 1000
Spearheading the firm’s IP department, Cristina Hernandez Marti is a pillar of rich legal, academic and business knowledge, particularly where trademark prosecution, unfair competition and advertisement law are concerned. She is known to possess “a strong business mindset that doesn’t centre the legal outcome as the main priority, but instead strives to find the right solution for the client”.……
Refusal of the EU trade mark RUSSIAN WARSHIP, GO F**K YOURSELF - devoid of distinctive character
On 16 March 2022, an application was filed for the European Union Trade Mark MUE 018672791 consisting of a figurative sign showing the slogan RUSSIAN WARSHIP, GO F**K YOURSELF in English and Russian, for the goods and services in classes 9, 14, 16, 18, 25, 28 and 41. The registration of the applied trade mark was refused in itsentirety on the grounds of article 7 (1) (f) EUTMR regarding the conflict with publicorder. The applicant appealed against the mentioned decision.The Board held that…
The 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…