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DeutschThe word mark Zara can not be registered for food products
BACKGROUND TO THE DISPUTE In March 2010, INDITEX filed an application for registration of an EU trademark with the European Union Intellectual Property Office (EUIPO). Registration as a mark was sought for the word sign ZARA, under which he intends to move on to other articles related to the food market. But a few months later, in September, an Italian company (FFAUF ITALIA SPA) filed a notice of opposition. They claim that they already have the LE DELIZIE ZARA trademark on the market, under…
Genuine use of the trade mark. Coffee-based drink, or energy drink? MONSTER ENERGY CO
BACKGROUND TO THE DISPUTE On 3 November 2010, MONSTER ENERGY CO., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO). Registration as a mark was sought for the word sign “MONSTER”. The goods in respect of which registration was sought are in Classes 30 and 32 of the Nice Agreement: Class 30: ‘Coffee based beverages and coffee based beverages containing milk´ Class 32: ‘Non-alcoholic beverages, namely energy drinks and energy…
Impact of disclosure of prior industrial designs and lack of individual character
BACKGROUND TO THE DISPUTE On 12 January 2007, Mr. Guasch Pubill applied for the following registration of a Community design at the European Union Intellectual Property Office (EUIPO): The goods in respect of which registration was sought are in, inter alia, within Class 6.13 of the Locarno Agreement, corresponding to the following description: 'Cleaning cloths, table linen'. On 15 February 2016, the intervener, Nap-Kings, S. L., filed an application for a declaration of invalidity of the…
The General Court of the European Union refuses to allow club AC Milan to register its trademark for stationery goods
BACKGROUND TO THE DISPUTE On 2 February 2017, the applicant, Associazione Calcio Milan SpA (AC Milan), submitted an application for international registration designating the European Union to the European Union Intellectual Property Office (EUIPO). Registration as a mark was sought for the following figurative sign: The goods in respect of which registration was sought are in, inter alia, Class 16 of the Nice Agreement and correspond to the following description: ‘Paper; cardboard; book…
INTA ANNUAL CONFERENCE 2021
HERNANDEZ MARTI ABOGADOS attended last week the annual INTA online congress and mini-conference that took place in person in Berlin. During the sessions, topics such as the importance of design and copyright and the issue of goods in transit were discussed. It was a perfect occasion to meet clients and colleagues again - see you in Washington.
Limitation of the effect of a trademark: descriptive use of the trade mark. Zara v. Boungiorno
BACKGROUND TO THE DISPUTE Boungiorno Myalert S.A. (hereinafter Boungiorno) is a company which in 2010 provided information services via the internet and mobile telephone network. At that time it launched a campaign for subscription to the SMS multimedia content delivery service which it marketed under the name "Club Blinko", in which it "offered, on certain web pages accessed via banners with the ZARA sign inserted in other web pages, on Facebook and Hotmail, participation in a prize draw in…
Weak trademarks and likelihood of confusion. Red Car Oil Gasolineras Lowcost" and "Red Ahorro 24 h" case.
BACKGROUND TO THE DISPUTE RED CAR OIL S.L. is a company engaged in the retail trade of automotive fuels and fuels and owner of service stations and car wash centres. On 28 January 2019, the said company filed an application for registration of the mixed trade mark "RED CAR OIL GASOLINERAS LOWCOST", with number 4.002. 215, to designate retail services for the retail sale of foodstuffs; retail services for the retail sale of tobacco; retail services for the sale of automotive fuels in specialised…
“Bachirulo" case. A change of product does not necessarily bring unique character to a design.
BACKGROUND TO THE DISPUTE ARTURO is the holder of registered industrial designs Nos. 514810-01 and 514810-02, consisting of applying the print of the “cachirulo aragonés” (handkerchief), in its two versions red-black / purple-black, to a tubular garment or neck brace. Since 1995, the trading company ORIGINAL BUFF S.A. has been marketing multifunctional tubulars with similar characteristics under the names "red vichy" and "electric vichy". ORIGINAL BUFF filed an action against D. ARTURO, in…
Common law action for passing off. Risk of misrepresentation and risk of dilution of the earlier trade mark. Abresham Super Basmati Selaa Grade One World's Best Rice v. Basmati
BACKGROUND TO THE DISPUTE On 14 June 2017, Mr Hamid Ahmad Chakari, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO). Registration as a mark was sought for the following figurative sign: The goods in respect of which registration was sought fall within Classes 30 and 31 of the Nice Agreement: Class 30: 'Flour of rice; rice-based snack food; rice cakes; rice pulp for culinary purposes; extruded food products made of rice´ and…
Calculation of the prescription period for industrial property claims against continuous infringement acts. - NADORCOTT mandarin tree case
BACKGROUND TO THE DISPUTE Following an application lodged by Nadorcott Protection SARL on 22 August 1995 with the Community Plant Variety Office (‘the CPVO’), the CPVO granted it a Community plant variety right in respect of the NADORCOTT variety of mandarin tree. An appeal with suspensive effect was brought against that decision before the Board of Appeal of the CPVO but was dismissed. Since 2006, JOSÉ CÁNOVAS PARDO S.L. has cultivated a grove of 4 457 mandarin trees of the NADORCOTT variety.…