Christmas is only a few weeks away! Now is the time for including gifts for your loved ones to your shopping lists. But as you browse through busy stores or infinite lists of products online looking for bargains, do not let the sweet vapours of mulled wine dull your senses. As the EUIPO and EUROPOL recently highlighted in a joint report published on 23 October 2024 on the ecosystem of Intellectual Property (IP) crime, counterfeit goods keep finding their way to our shelves and represent a staggering 5.8% of EU trade. The report sheds light on how much IP crime remains a threat to European consumers, how it is enabled, and how its impact could be mitigated.

On 14 February 2019, the Higher Regional Court Frankfurt a.M. ruled that German courts have an international competence for adverts on the Internet in particular, if those adverts are provided on a “.de”-top-level-domain and if the web presence does not contain indications that the offer is not directed to German customers.

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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 ‘BIG 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.

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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.

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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.