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DeutschThe perception of the term TORTA as an indicator of a PDO. Torta del Casar vs. Torta de la Serena
Background of the case On 12 December 2011, the Regulatory Council of the Protected Designation of Origin 'Queso de La Serena' filed the following EUTM application: On 8 March 2012, the Regulatory Council of the Designation of Origin 'Torta del Casar' filed a notice of opposition against all the goods and services in the contested trade mark application on the basis of the following earlier marks: European Union trade mark National trade mark Also on the basis of a European Union PDO No…
The intention of the applicant and the relation with bad faith
Background of the case On 5 July 2019, Murcia Commercial Court No. 2 issued a judgment in the lawsuit brought by the company Aznar Zamora against Exigrup J. Guerrero for infringement of its exclusive rights due to the defendant Exigrup J Guerrero SL's use of the sign "EXIGRUP". The defendant opposed as well as requested the dismissal of the claim, the nullity of the plaintiff's trademark on the grounds of bad faith when it was registered as it coincides with the term that corresponds to the…
The sign´s orientation when assessing the similarity of the trademarks. Chanel vs. Huawei.
BACKGROUND OF THE CASE On 28 September 2017, Huawei filed an application for registration of a EUTM for some of the goods in Class 9. Registration as a mark was sought for the following sign: On 28 December 2017, Chanel filed a notice of opposition which was based first on Article 8.1(b) of the European Union Trade Mark Regulation, and on an earlier French figurative mark, covering, inter alia, goods in Class 9. The opposition was based also on Article 8.5 of the Regulation and on a French…
Advertising without actually selling can be considered as use of the trade mark. IKONIK HOTEL case
BACKGROUND OF THE CASE The applicant High Tech Hotels brought an action against Agincourt seeking a declaration of revocation of the trade mark IKONIK HOTELS, registered for classes 35 and 43, alleging lack of genuine use of the trade mark by the proprietor and having a legitimate interest given that the defendant had opposed its application for the European trade mark ICON HOTELS. The defendant argued that the trade mark was in use, since a hotel was being built in Puebla, Mexico. The website…
Fashion Law Experts Association
Cristina Hernandez-Marti Perez, lawyer and partner of this professional law firm, has been admitted as a member of the Fashion Law Experts Association (AEDM).
The modular design of parts and the protection granted by the community design. Lego case.
Background of the case On 2 February 2010, the applicant, Lego A/S, filed an application for a registered Community design at EUIPO, which was published in the Community Designs Bulletin N. 32/2010 of 11 February 2010, as follows: On 8 December 2016, the German toy company Delta Sport Handelskontor GmbH filed an application for a declaration of invalidity claiming that all the appearance features of the product concerned by the contested design were dictated solely by the technical function of…
Happy World Intellectual Property Day!
Happy World Intellectual Property Day! World Intellectual Property Day 2021 shines a light on the critical role of small and medium-sized enterprises (SMEs) in the economy and how they can use intellectual propertyrights to build stronger, more competitive and resilient businesses. #worldIPday
The consideration of bad faith in imposing the costs of the proceedings. Industrial designs invalidity proceedings. Desigual case.
Background of the case In January 2015 it was found that in the defendant ´s premises, the company SARA BAG SL, was selling bags reproducing prints from DESIGUAL products which are protected under intellectual and industrial property rights. Subsequently, a criminal complaint was filed and the infringing goods were seized following Preliminary Proceedings in the Instruction Court 4 of Fuenlabrada. Afterwards, the defendant applied for the industrial design nº 509.989, which replicates the…
Are the heirs of Antonio Gaudi entitled to claim as prior rights the name, surname and image of the latter? The Trademark Act 17/2001 applied by the EUIPO Board of Appeal
Background of the case On 24 March 2016, Gaudí BCN Projects S.L. fileD the following EUTM: In order to distinguish services in class 35 and class 42. Filing, the Junta Constructora del Temple Expiatori de la Sagrada Familia, an application for invalidity, on 26 November 2018 based on the following earlier rights: Spanish Trade Mark ANTONI GAUDI; Spanish Trademark European Union trade mark MUSEU GAUDI, Right to the name ANTONI GAUDI and Right to the image ANTONI GAUDI. On 14 April 2020, the…
Principle of specialty and scope of protection of trademarks with reputation. The Puma Case
Background of the case On 1 June 2017 CAMäleon Produktionsautomatisierung GmbH filed an application for the registration of an EU trade mark for the word sign PUMA-System in Classes 7, 9, 16 and 42. Following this application, Puma SE filed an opposition on 24 October 2017 based on two EUTMs that contained the term PUMA in Classes 18, 25 and 28 relying on the reputation that both earlier marks have in the European Union, thus alleging the risk of infringement of Art.8.5 of the EU Trade Mark…