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DeutschWeak 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.…
A word sign must be refused registration if at least one of its potential meanings designates a characteristic of the goods or services concerned. “Made of Wood" case
BACKGROUND TO THE DISPUTE On 6 May 2019, the applicant, Mr Beelow, applied to the European Union Intellectual Property Office (EUIPO) for registration of a European Union trade mark. The trade mark applied for is the word sign 'made of Wood'. The goods in respect of which registration was sought are in Class 25 within the meaning of the Nice Agreement and correspond to the following description: 'T-shirts; sleeveless pullovers; polo shirts; polo jerseys; jumpers; hooded sweatshirts; shirts;…
The reputation enjoyed by the 'Estrella Galicia' trademark in the beer sector cannot be extended to oils and fats for food use. Estrella Galicia v. Estrella Andaluza
BACKGROUND TO THE DISPUTE The entity "Hijos de Rivera, S.A." lodged an administrative appeal against the decision of 23 October 2019 of the Spanish Patent and Trademark Office which dismissed the appeal lodged against the decision of 10 June of the same year which granted registration of trademark No. 3,741,648 "Estrella andaluza" (word graphic) applied for by the entity "Hottos 2018, S.L." to protect goods in class 29 of the international nomenclature, definitively granting the registration.…
The General Court finds that there is a likelihood of confusion. FRESHLY COSMETICS IDENTY v. IDENTITY
BACKGROUND TO THE DISPUTE On 6 June 2018, the appellant, Freshly Cosmetics, S. L., filed an application for registration of an EU trade mark at the European Union Intellectual Property Office (EUIPO). The trade mark in respect of which registration was sought is the following figurative sign: The goods in respect of which registration was sought are in Class 3 of the Nice Agreement and correspond to the following description: 'Make-up preparations; preparations for the care of the skin, eyes…
The overall impression produced by the contested design is different from those produced by the earlier marks. TOUS vs. The Bear-shaped lamp ZHEJIANG CHINA
BACKGROUND TO THE DISPUTE Zhejiang China-Best Import & Export Co. Ltd, is the proprietor of Community design No 4422343 0012, which was applied for and registered on 26 October 2017, as part of a multiple application, for 'luminaires' falling within class 26.05 of the Locarno Agreement and is represented in the following image: On 10 July 2018, the appellant, S. TOUS, filed an application with the European Union Intellectual Property Office (EUIPO) for a declaration of invalidity of the…
In assessing the similarity of the goods or services, all the relevant factors relating to those goods or services should be taken into account. Sfera / Sfera Kids v. Sfora Wear
BACKGROUND TO THE DISPUTE On 21 September 2016, the other party to the proceedings, Andrzej Koc , filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO). Registration as a trade mark was sought for the word sign SFORA WEAR. The goods for which registration was sought are in Classes 18, 24 and 25 of the Nice Agreement. On 20 January 2017, the applicant, Sfera Joven, SA, filed a notice of opposition against the registration of the…
Requirements for an unregistered trade mark to be able to apply for a invalidiy declaration of a subsequently registered trade mark.
Background to the dispute On 22 September 2009, Fiesta Hotels & Resorts, S.L. filed an application for registration of an EU trade mark at the European Union Intellectual Property Office (EUIPO). The trade mark in respect of which registration was sought is the following figurative sign: The services in respect of which registration was sought are in Class 43 of the Nice Agreement and correspond to the following description: 'Restaurant services (food and drink); temporary accommodation'.…