Assessment of the continuous period of five years at the date on which the counterclaim was filed
Trade Mark Law - The date with regard to which it must be determined whether the continuous period of five years has ended is the date on which the application or counterclaim in question was filed: assessment with regard to the date of the last hearing would be against the consequences of revocation as provided for …
moreApplication Looplabb for a declaration of invalidity of Izipizi's shape mark rejected
Trade Mark Law - The Cancellation Division rejects Looplabb's application for a declaration of the invalidity of the shape mark filed by Izipizi. The EUIPO considers that the criteria for assessing distinctiveness are the same for the various categories of marks. However, the relevant public's perception of …
more"Electrical energy" not wrongly excluded from Class 4 "motor fuel" of 8th edition Nice Classification
Trade Mark Law - Litigation - “Electrical energy” has not been wrongly excluded of the goods in Class 4 of the eighth edition of the classification of Nice: the argument that the General Court failed to adopt a ‘functional’ approach is unfounded, the complaint directed against a ground expressed for the sake …
more'Genuine use' by selling second hand parts or accessories of expensive luxury sports car Testarossa
Trade Mark Law - A trade mark has been put to 'genuine use' for all goods if it is used for certain of the goods, such as very high priced luxury sports cars or only for parts or accessories of certain of the goods: the mere fact that cars for which a trade mark has been used may belong to a specific market of …
moreCharacteristic shape or appearance of a protected designation of origin (PDO) may be protected in certain cases
Protected designation of origin - Geographical indications - Article 13(1) of Regulation No 1151/2012 (PDO scope of protection) covers, in a broad sense, all acts which may mislead the consumer as to the true origin of the product concerned: certain characteristics or qualities of the product covered by the PDO …
moreNo trade mark protection for Banksy on 'Flower Thrower'
In 2014, the artist, represented by the company Pest Control Services, applied for an EU trademark of the image 'Flower Thrower' to prevent the use of this piece by a greeting card company. The latter found that they were allowed to use the work because the maker is anonymous. Because of the anonymity, Banksy cannot …
moreLionel is allowed to register MESSI trade mark: no likelihood of confusion with MASSI
Trade Mark Law - In 2011, Lionel Messi filed an application for registration of the shown figurative sign as an EU trade mark for sports clothing, footwear and equipment. An opposition was filed based on the EU word mark MASSI. The opposition was upheld by the EUIPO. The General Court however found that that the …
moreOpinion A-G: by way of framing of a work to make it available on a website is no communication to the public even when measures are taken against framing
Opinion of Advocate General Szpunar. With the consent of the rightholder, a work has been made available on a freely accessible website. A third party has placed this work on his website by way of framing, while the rightholder has taken protection measures against framing. The third party has circumvented these …
moreCopyright protection applies to a product whose shape is, at least in part, necessary to obtain a technical result
Copyright - Related Rights - Articles 2 to 5 of Directive 2001/29 must be interpreted as meaning that the copyright protection provided for therein applies to a product whose shape is, at least in part, necessary to obtain a technical result: the product must be an original work resulting from intellectual creation. …
moreThe proprietor of a trade mark has an exclusive right within the five-year period from its registration even if the trademark is not being used
Trade mark law - The Trade Mark Directive leaves Member States the option of allowing the proprietor of a trade mark whose rights in that mark have been revoked on expiry of the five-year period from its registration to make genuine use of the mark to retain the right to claim compensation for the injury sustained …
moreIn assessing whether a sign consists exclusively of the shape of goods which is necessary to obtain a technical result, other factors such as the perception of the relevant public can also be taken into account
Trade mark law - In order to establish whether a sign consists exclusively of the shape of goods which is necessary to obtain a technical result, assessment does not have to be limited to the graphic representation of that sign: other relevant factors such as the perception of the relevant public can also be taken …
moreTerm 'addresses' in Article 8(2)(a) of Direrctive 2004/48 refers solely to a postal address
Private International Law - Article 8(2)(a) of Directive 2004/48 on the enforcement of intellectual property rights must be interpreted as meaning that the term 'addresses' contained in that provision does not oblige platforms such as Youtube, in respect of a user who has uploades files which infringe an …
moreA natural person who has imported ball bearings weighing 710 kg in exchange for cognac and cigarettes, has used the trade mark affixed to the ball bearings in the course of trade
Trade mark law - A natural person who has imported - without the consent of the proprietor of the trade mark that is affixed to them - ball bearings weighing 710 kg on behalf of a third party and has retained and stored them, prior to their being uplifted for onward shipment to a non-Member State in exchange for a …
moreAG: Youtube is not directly liable for the illegal uploading of protected works by users
Copyright - According to Advocate General Saugmandsgaard Øe, online platfors like Youtube are - as EU law currently stands - not directly liable for the illegal uploading of protected works by the users of those platforms.
As you may know, Directive 2019/790 introduces a new liability regime specific to works …
moreCourt of Justice EU invalidates Decision 2016/1250 on the adequacy of the protection provided by the EU-US Data Protection Shield
Privacy - Press release CJEU: “Commission Implementing Decision (EU) 2016/1250 of 12 July 2016 pursuant to Directive 95/46/EC of the European Parliament and of the Council on the adequacy of the protection provided by the EU-US Privacy Shield is invalid.”
moreEplit appoints Leythem Wall as new president
“On 15 May 2020 at its Annual Meeting, the European Patent Litigators Association (EPLIT) appointed Leythem Wall as its new President for the 2020-2022 term. EPLIT is an association for European patent attorneys, whose objectives are for promoting their participation in user friendly, fair, efficient and cost …
moreAmazon is not infringing Coty trade marks by storing infringing perfumes on behalf of a third party
Trade mark law - Amazon is not infringing Coty trade marks by storing infringing perfumes on behalf of a third party without being aware of that infringement: the Court has already pointed out that ‘using’ involves active behaviour and direct or indirect control of the act constituting the use, in order for the …
moreThe hiring out of motor vehicles equipped with radio receivers does not constitute a communication to the public
Copyright - The hiring out of motor vehicles equipped with radio receivers does not constitute a communication to the public: in the case of the supply of a radio receiver forming an integral part of a hired motor vehicle, which makes it possible to receive, without any additional intervention by the leasing company, …
moreCaroline Pigott joins HGF Edinburgh team
"Caroline Pigott has joined the HGF Scottish team. She is dual qualified as a Scottish IP Solicitor and a Chartered Trade Mark Attorney and will be based in Edinburgh. Caroline will be looking to boost the firm’s trade mark presence in the region. Caroline’s appointment follows another year of exceptional …
moreHGF announces 2 new Partners
"HGF Ltd is delighted to announce that from the 1st of May 2020, Dr Jamie Thomson based in the Edinburgh office and Dr Nienke Lubben based in the York office have been promoted to Partner, increasing the Partner group to 63 Partners.
Paul Sanderson, CEO commented, “It is my pleasure to announce that Jamie and …
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