Use of figurative element of a composite mark is "genuine use" if distinctive character is not affected

IPPT20171011, CJEU, EUIPO v Cactus

Trade Mark Law - Judgments CIPA v Registrar (IPPT20120619) and Praktiker Bau v Deutsche Patent und Markenamt (IPPT20050707) do not relate to earlier trade marks registered before the date of those judgments. Use of only the figurative element of a composite mark is "genuine use" if the distinctive character of the …


Appeal against international word mark “CHEMPIOIL” dismissed

IPPT20171005, CJEU, Wolf Oil

Trade Mark Law - A distinction should be made between the assessment of the conceptual differences between signs at issue and the overall assessment of their similarities, which form two distinct stages in the analysis of the overall likelihood of confusion, the first being a prerequisite for the second.


Opinion AG CJEU: Online recording service where the provider receives and records the signal breaches InfoSoc Directive

Case law

Copyright - Case C-265/16: VCAST v RTI. Opinion AG Szpunar. Opinion about whether reproduction in the cloud is still made ‘by’ the beneficiary of the private copying exception, as required by the legislation. VCAST provides its users with a cloud recording system for free-to-air terrestrial programmes broadcast …


Court of Justice EU about Private International Law issues regarding accused design infringers in different memberstates

IPPT20170927, CJEU, Nintendo v BigBen

Private International Law - Design Law - The Community design court can, in cases where the jurisdiction towards one defendant is based on Article 82(1) Community Designs Regulation (CDR) and jurisdiction towards a second defendant established in another Member State is based on Article 6(1) Brussel 1 Regulation and …


Court of Justice EU on the essential funtion of an EU collective mark

IPPT20170920, CJEU, The Tea Board v EUIPO

Trade Mark Law - Essential function of an EU collective mark: distinguishing the goods or services of the members of the association which is the proprietor of the trademark from those of other undertakings, and not to distinguish those goods according tot heir geographical origin. Where signs are, on the one hand, …


Ranee van der Straaten: The risks of personal branding


World Trademark Review, August/September 2017, issue 68, p. 93-95, Ranee van der Straaten (Banning):“This article first appeared in World Trademark Review issue 68, published by Globe Business Media Group – IP Division. To view the issue in full, please go to”

“Your personal name …


Ranee van der Straaten: Smell-alikes: Lessons from Chanel and Coty's smell-alike victory


World Trademark Review, December 2016/January 2017, issue 64, p. 22-23, Ranee van der Straaten (Banning):“This article first appeared in World Trademark Review issue 64, published by Globe Business Media Group – IP Division. To view the issue in full, please go to”


“Across …


15% discount on tickets for the IP World Summit for users of IP-PorTal


IP-PorTal is a media partner of the IP World Summit 2017 which will take place in Amsterdam from 25 - 27 September. The Summit is a “one-stop shop for IP leaders offering a mix of thought provoking and practical sessions now covering a range of approaches to IP protection and monetisation, including patents, trade …


Request for a preliminary ruling concerning the display of press products by commercial search engines

Pending Case law

Copyright - Case C-299/17, VG Media. Request for a preliminary ruling. Landgericht Berlin - Germany. Applicant (VG Media) is a company which exercises the rights of §87f of the German Copyright Law of holders of related rights in digital publishing against users. On 01.08.2013 the so-called related right for …


Request for a preliminary ruling concerning the issuing conditions of supplementary protection certificates

Pending Case law

Patent Law - Case C-443/17 Abraxis Bioscience. Request for a preliminary ruling. High Court of Justice UK.Applicant (Abraxis Bioscience) has filed an application for a supplementary protection certificate (SPC) with the Intellectual Property Office of the United Kingdom (UK IPO) . Defendant (Comptroller-General, …


Request for a preliminary ruling concerning the disclosure of medicinal product characteristics by the Medicines Evaluation Board of the Netherlands

Pending Case law

Patent Law - Case C-423/17 Warner-Lambert Company. Request for a preliminary ruling. Court of Appeal The Hague. Request for a preliminary ruling: 1. Must Article 11 of Directive 2001/83 or any other provision of Union law be interpreted as meaning that a notice by which the applicant or holder of a marketing …


Request for a preliminary ruling concerning the availability of radio- and television programmes online

Pending Case law

Copyright - Case C-298/17 France Télévisions. Request for a preliminary ruling. Conseil d'État (Frankrijk). The applicant asks the referring court for the annulment of a decision of 27/05/2015 by the FRA Broadcasting Service (CSA, defendant) by which the applicant has been instructed to allow the company …


Google trademark questioned before Supreme Court


Ars Technica: "Is the term "google" too generic and therefore unworthy of its trademark protection? That's the question before the US Supreme Court. Words like teleprompter, thermos, hoover, aspirin, and videotape were once trademarked. They lost the status after their names became too generic and fell victim to what …


Nintendo accused of patent infringement Switch-controllers


Engadget: "The Nintendo Switch certainly isn't the first gaming tablet, but is it directly riffing on others' ideas? Gamevice thinks so. The accessory maker is suing Nintendo for allegedly violating a patent for concepts used in the Wikipad, its gaming-oriented Android slate, as well as its namesake add-on controllers …


Disney to start own streaming service and end Netflix deal


The Verge: "Disney will end its distribution deal with Netflix and launch its own streaming service, the company announced today. It intends to launch the service in 2019. Netflix won’t lose its Disney movies right away. Disney says it plans to cut Netflix off starting with the studio’s 2019 films, and Netflix …


German Federal Patent Court declares the three-dimensional sign of Capri-Sun invalid

Case law

(Courtesy of Ranee van der Straaten, BANNING and Monique Hennekens) Trade mark law - Judgement of the German Federal Patent Court (Bundespatentgericht) of 28 June 2017 in the case of Deutsche SiSi-Werke Betriebs GmbH v. Riha WeserGold Getränke GmbH & Co, concerning the Capri-Sun stand-up pouch (SiSi).


Court of Justice confirms the judgement of the General Court with regard to the likelihood of confusion 'X' and 'XKING' for tyres

IPPT20170726, CJEU, Continental Reifen v Michelin

Trade Mark Law - The view of the General Court regarding the distinctiveness of an earlier mark is based on an error in law: it is clear from the brochures provided by Michelin that the stylised letter ‘x’ is used, in isolation or in combination with other letters, to designate a technical characteristic of …


Appeal dismissed

IPPT20170726, CJEU, Meica v Salumificio Fratelli

Trade Mark Law - General Court made no error in law by holding that the Board of Appeal was fully entitled - after a global assessment - to conclude that there was no likelihood of confusion between the marks at issue. Other grounds of appeal are manifestly unfounded because they concern factual assessments of the …


Apple ordered to pay $506 million for patent infringement iPhone processors


Reuters: “A U.S. judge on Monday ordered Apple Inc to pay $506 million for infringing on a patent owned by the University of Wisconsin-Madison's patent licensing arm, more than doubling the damages initially imposed on Apple by a jury. […]


WARF sued Apple in 2014, alleging processors found in some versions of …

more sentenced to grant unrestricted access to its CMS to MN

IPPT20170601 NLDC Amsterdam, MN v Zoom in

IP contract law - failed to sufficiently demonstrate that meetings its obligations towards MN, would lead to the demise of the company:  It can by no means be concluded that an agreement with YouTube, with the retention of the identity and independence of MN, could not be in agreement with the new YouTube …

Courtesy of Diederik Stols, Boekx Advocaten