The German Federal Court of Justice (BGH) recently rendered a decision on trademark use in the field of textiles that is worth reading.

In general, use as a trademark requires that a significant part of the relevant public recognizes a sign as indicating the origin of a product. For that, it is not sufficient that a sign is originally distinctive and that its use is not plainly descriptive. Instead, use as a trademark has to be assessed in each case individually taking into account all circumstances of the case. Thus, use of a first name like “SAM” as a model designation can also constitute use as a trademark and, in consequence, be deemed trademark infringement.

  Weiterlesen über „Model: Sam“ - Use as a trademark or a simple model designation?

In March 2019, the European Union Intellectual Property Office (EUIPO) and the Organisation for Economic Cooperation and Development (OECD) published a study estimating the total value of counterfeit and pirated goods traded both globally and on EU level. The new report updates the original analysis from 2016. According to the report, the intensity of counterfeiting and piracy is clearly on the rise.

 

                                                 

ECJ landmark case: Successful invalidity proceedings against an EU design based on an earlier trademark

With its decision dated 6 March 2019, the European Court of Justice (ECJ) confirmed a decision of the European General Court (GC) concerning invalidity proceedings between Ferrero SpA (Ferrero) and BMB sp. z o.o. (BMB) regarding the following opposing IP rights.

                         

The Cancellation Division of the European Union Intellectual Property Office (EUIPO) surprisingly revoked the European Union Trademark ‘BIC MAC’ in its decision of 11 January 2019 (Cancellation No 14 788 C).

                                              

German trademark no. 407752 “Tempo” (word mark) was filed on 29 January 1929 and, hence, celebrates its 90th birthday this year. Even the German Patent and Trademark Office (GPTO) contributes to this fact and has recently published a laudatory article (https://www.dpma.de/english/our_office/publications/milestones/tempo90/i...) about the trademark and its different owners who have changed several times over the past decades. With the present blog article, we wish to congratulate the trademark Tempo to its impressive genesis but also highlight issues resulting from exorbitant fame of trademarks – which is both a blessing and a curse.

On 1 February 2019, amendments to the Common Regulations under the Madrid Agreement and Protocol came into force. While it had already been possible to partially transfer an International Registration to a new owner, it is now also possible to request the division of an International Registration for only some of the goods and services in respect of a designated Contracting Party.

In its decision of 10 January 2019, the European Union Intellectual Property Office (EUIPO) Board of Appeal found that there was a likelihood of confusion between the applied EU trademark (EUTM) “OTTOSUN” and the earlier EUTM “OTTO” for certain goods in classes 9 and 11.

On EU-level, the revised EU Trade Mark Directive 2015/2436 of 16 December 2015 (EUTMD) and the new EU Trade Mark Regulation (EUTMR) entered into force at the beginning of 2016. After comprehensive preparatory work done by the Federal Ministry of Justice and Consumer Protection combined with expert support by the German Patent and Trade Mark Office (GPTO), the Trade Mark Law Modernisation Act (Markenrechtsmodernisierungsgesetz), and thus the amendment of the Trade Mark Act to implement the EUTMD, entered into force on 14 January 2019 with the goal to harmonize a significant number of optional provisions of the EUTMD into German law.

The International Trademark Association (INTA) in conjunction with the German Patent and Trademark Office (DPMA) will hold a Trademark Administrators Seminar in Munich, Germany, designed specifically for Trademark Administrators, Paralegals and other staff dealing with trademarks. 

 

My name is Hanna Lahtela and I am a 25-year-old law student from Finland. I will be working as a Legal Trainee at LexDellmeier Intellectual Property Law Firm from January until the end of June 2019.

My interest in IP law started even before I was accepted to law school. One of our books for the admission test was about IP law and I received a strong basic knowledge already at that point. I am studying my fifth and final year at the University of Helsinki and my interest in IP law has just increased year by year. In 2016, I participated in the annual Nordic IP Moot Court Competition in a team of three persons. Currently I am working on my Master’s thesis regarding trademarks that are contrary to public order or morality.