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Trademark Use in Germany and the EU - Why brand owners must use their trademarks

Trademarks present a link between a brand owner and its consumers. They are the easiest way to differentiate one product from another and one competitor from another, at the same time creating customer loyalty and strengthening of the brand. However, why do brand owners actually need to use their trademark if it is registered? This article tackles the importance of genuine trademark use and how to prove use in Germany and the EU.

How do you receive trademark protection in Germany and the EU?

Brand Finance Football 50 is an annual study conducted by one of the leading brand valuation and strategy consultancies. The study published on June 6, 2016 determines which of the word largest football clubs have the most powerful and valuable brands.

The numbers do not lie. As can be seen in the chart, the world’s most valuable football club brand this year is Manchester United FC with a brand value estimated at 1,170 USD million. The second position is occupied by the current Champions League Winner, Real Madrid, and the podium’s third place is attributed to its forever greatest rival, Barcelona.

The color red means energy, strength, power and passion. Shoe-wise, for most women it means one thing: Louboutins. However, the road was not easy for the French designer. In-and-out of courts for years now, the battles for his in(famous) “Red Sole” linger on. The most complex one, against van Haren, made its way up to the European Court of Justice (CJEU, ECJ) on 27 May 2016. We are giving you a summary of Louboutin´s time in court, as well as keeping you posted on all the updates.

 

USA

Christian Louboutin had no problem registering his red soles in the USA. Under the registration numbers 3376197 and 3361597, the US Patent and Trademark Office readily protected “lacquered red sole on footwear” or the “Red Sole Mark”.

Since 2012, one of the burning topics worldwide has been the protection of trade secrets. With new proposals to update current legislation coming from all major markets, it is only logical for the EU to jump on the bandwagon and acknowledge that the current fragmented legislation is not up to standards.

 

Currently, it seems only as a Member State has specific legislation concerning trade secrets, along with pending proposals in France and Romania. Other countries only have very limited provisions in their laws, whether in their criminal codes, civil codes, labor laws or other legislation.

 

This is all about to change, as the new EU Trade Secrets Directive  was adopted on May 27, 2016, with a 2-year time frame to implement the changes.

 

General information about trade secrets

 

An Italian decision from March 2016 clarified the scope of protection for shape marks when it comes to jewelry, where a minor design change makes all the difference. The judge confirmed that even the smaller design discrepancies are enough to exclude foul-play and the possibility of misleading the customers.

  

 

Background of the case

Given the notoriety of McDonald´s and their products, it is hard to imagine anyone would challenge their entitlement to the “Mac” and “Mc” prefixes. However, it was only recently that the European General Court (the EGC) confirmed in its decision T518/13 dated 5 July 2016 that the contested prefixes are reserved for McDonald´s in the food industry.

 

On April 24, 2016 the European Union Intellectual Property Office (EUIPO) published the report on infringements of protected geographical indications (GIs) for agricultural products in the EUA GI is an indication (usually a name) used on products having a specific geographical origin and possessing a given quality, reputation or other characteristic that is essentially attributable to that origin. The study was conducted from 2012 to 2015, with the aim to establish the size and value of the GI market in the EU, as well as the impact of infringements on EU customers. It included all protected GIs, coming from EU Member States and third counties, protected through registration or by an international agreement.

 

 

In line with a recent Louboutin decision, the Swiss Court on 13 May 2016 decided on another purely decorative element filed as a position trademark. This time, German flashlights were in question, and the circular position of the holes on their rim.

 

 

Background of the case

We all know that the Internet is everywhere and that our life without has become unimaginable. We also know that its popularity soaring by the minute. However, the rates of its expansion might be even more than anyone could have imagined. If the number of Internet users continues to rocket at current rate, it is predicted to have 5 billion users by 2020. The expected population by that time is 7.8 billion. Therefore, 64% of population in the world will be connected! This is especially shocking in comparison to the numbers from 2014, when (only) 40% of citizens were Internet users.

 

In the past fifteen years, not only have the numbers skyrocketed, China has taken over the lead in the highest number of Internet users. It clearly established its dominance, doubling the numbers of the next-in-line USA.

 

On 23 June 2016, the referendum held in the UK tailored history and after 43 years of membership, a small majority of UK citizens decided to leave the EU. As one of the leading countries, with the second largest nominal GDP in the EU, it is safe to say things will now have to notably change. However, it should be mentioned that the switch will not come overnight, there are negotiations to be held and conditions to be met, and the real exit is not expected for a couple more years.

 

First thing to know is that EU trademark and design systems will no longer be applicable in the UK. Likewise, EU Courts will no longer be an option for the UK citizens.