National law applicable to an ownership claim regarding an EU trade mark provided that the situation concerned does not fall within those covered by Article 18 CTR

IPPT20171123, CJEU, Benjumea Bravo de Laguna v Torras Ferrazzuolo

Trade Mark Law - National law applicable to an ownership claim regarding an EU trade mark provided that the situation concerned does not fall within those covered by Article 18 of the EU Trade Mark Regulation.


Indirect infringement of Swiss-type claims is possible

IPPT20171103, NLSC, MSD v Teva

Patent Law - The mere circumstance of a carve-out not sufficient to rule out direct infringement of the second medical indication. Distinction drawn by the Appellate Court in the scope of protection of ‘classic second medical indication’ and ‘sub-group indication’ is incorrect. Direct infringement of …

Courtesy of Tobias Cohen Jehoram, Vivien Rörsch and Carlos van Staveren, De Brauw Blackstone Westbroek

CJEU annuls revision decision of Lisbon Agreement

IPPT20171025, CJEU, European Commission v Council of European Union

European Administrative law: Council Decision 8512/15 authorising the Commission to open negotiations, together with member states, regarding the revision of the Lisbon Agreement on Appellations of Origin and Geographical Indications, annulled because it falls under the exclusive competence of the Union.


Activision accused of taking advantage of goodwill and reputation of Humvee trade marks in Call of Duty games


Reuters: "The maker of Humvee military vehicles filed a lawsuit accusing Activision Blizzard Inc of reaping billions of dollars of revenue by incorporating its trademarks without permission in its flagship “Call of Duty” video game franchise.


In a complaint filed on Tuesday night in U.S. District Court in …


Opinion A-G in Doceram on technical determination that excludes protection when functionality is the only factor determining the design


Design law C-395/16 Doceram. Preliminary questions. A-G H. Saugmandsgaard Øe. Preliminary questions:

‘(1) Does a technical function that precludes protection within the meaning of Article 8(1) of [Regulation No 6/2002] also exist if the design effect is of no significance for the product design, but the …


General Court erred in law when it imposed the requirement on EUIPO to construct elements of earlier designs in assessing the novelty of a design

IPPT20170921, CJEU, Easy Sanitary Solutions and EUIPO v Nivelles

Design Law - Error in law in judgment of the General Court when it imposed the requirement on EUIPO to construct elements of earlier designs in assessing the novelty of a design. Rightly held that ‘sector concerned’ within meaning of Article 7(1) of the EU Designs Regulation is not limited to that of the product …


CJEU on jurisdiction in simultaneous and successive civil actions on the basis of EU- and national trade marks

IPPT20171019, CJEU, Merck v Merck

Trade Mark Law - Private International Law - The condition laid down in Article 109(1)(a) of the EU Trade Mark Regulation as to the existence of the ‘same cause of action’ applies only in so far as those actions relate to an alleged infringement of a national trade mark and an identical EU trade mark in the …


Mitsui & Co Ltd and Novagraaf establish Strategic Alliance


Press release: Mitsui & Co Ltd. (‘’Mitsui’’) and European intellectual property (IP) group Novagraaf BV have established a partnership to offer greater choice to Japanese customers. The agreement, which includes an investment by Mitsui in Novagraaf, will support Novagraaf’s strategy to transform the way …


Article 22(4) of Council Regulation (EC) is not applicable to disputes about whether a person is entitled to be registered as a trademark holder

IPPT20171005, CJEU, Hanssen Beleggingen

Private International Law - Trade Mark Law - Article 22(4) of Council Regulation (EC) regarding proceedings concerned with the registration or validity of an intellectual property right is not applicable to disputes about whether a person is entitled to be registered as a proprieter of a trade mark


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Action for trademark infringement may not be dismissed on the basis of a not yet upheld counterclaim for a declaration of invalidity

IPPT20171019, CJEU, Raimund v Aigner

Trade mark law - Litigation - Article 99 (1) of Regulation No 207/2009 must be interpreted as meaning that an action for trademark infringement may not be dismissed on the basis of an absolute ground for invalidity, without that counterclaim for a declaration of invalidity being upheld. When the decision of the …


CJEU on jurisdiction regarding online publications

IPPT20171017, CJEU, Bolagsupplysningen v Svensk Handel

Private International Law - A legal person claiming that its personality rights have been infringed by the online publication of incorrect information and failure to remove comments can bring an action for rectification of that information, removal of those comments and compensation of all the damage sustained before …


Bundesgerichtshof annuls decisions against 3D glucose tablets marks

Case law

On the 18th of october the Bundesgerichtshof annulled two Bundespatentgericht rulings on the eligibility for trademark protection. The Bundespatentgericht decided on the 27th of december 2016 that a three dimensional shape of a tablet with rounded corners was not eligible for protection as a trademark, because the …


Bundesgerichtshof annuls decisions against 3D chocolate marks

Case law

Marques: "In yesterday's decision, the German Federal Court of Justice (Bundesgerichtshof) annulled two rulings of the German Federal Patent Court (BPatG) that held both three-dimensional signs depicted below not to be eligible for protection as trade marks. […


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 …