European Union Intellectual Property Office Research Articles

Divergences in the recent case-law of the General Court of the European Union in the field of IP

Abstract The purpose of the present article is to identify certain important issues in relation to which there have been divergences in the recent case-law of the General Court of the EU in the field of IP law and to examine the way the EU judicature has dealt with them. It is structured as follows. Its introductory part presents succinctly the main reasons for inconsistencies in the case-law of the General Court in the field of IP law and the existing mechanisms aimed at preventing, eliminating or minimizing them. Its main part examines the following four questions of EU IP procedural and substantive law, reflecting diverging opinions of the General Court: (i) admissibility of an intervention before the General Court submitted by the other party to the proceedings before the Board of Appeal of the European Union Intellectual Property Office (EUIPO); (ii) admissibility of evidence presented for the first time before the General Court in proceedings concerning EU trade marks; (iii) effect of the termination of protection of earlier rights while proceedings are pending before EUIPO; and (iv) likelihood of confusion in the context of the comparison of goods in cases involving alcoholic and non-alcoholic beverages. The article concludes by stressing that, while the occurrence of divergences in the case-law of the General Court may be unavoidable, swift detection of the existence and the exact content of such issues is an important step towards resolving them effectively, in the interest of legal certainty and equality in the application of law.

Round-up of non-traditional EU trade mark decisions 2023

Abstract In 2023, a total of 148 586 trade marks were registered by the European Union Intellectual Property Office (EUIPO). Only 443 of these were ‘non-traditional trade marks’, by this inter alia meaning sounds, colours, patterns, shapes and holograms. Data suggest that the present trend towards obtaining EU trade mark (EUTM) registration for non-traditional trade marks remains low, with merely 0.29 per cent of all applications received by the EUIPO in 2023 concerning such signs. The limited number of cases decided during this period relates to the distinctiveness of such trade marks. This article provides an analysis of six decisions of the General Court and the EUIPO Boards of Appeal, within the field of non-traditional EUTM’s issued in the course of 2023.

TRADEMARK - PROTECTIVE ELEMENT OF INTELLECTUAL PROPERTY RIGHTS

At EU level, the legal framework for trademarks coexists with national systems harmonized through the Trademarks Directive [Directive (EU) 2015/2436 of 16 December 2015]. In addition to the national way, other possible ways for trademark protection in the EU are the Benelux way, the EU trademark, introduced in 1994, and the international way. Regulation (EU) 2017/1001 of 14 June 2017 on the European Union trade mark codifies and replaces all previous EC regulations on the EU trademark. The codification was done for reasons of clarity, given that the EU trade mark system had already been substantially amended several times. The EU trademark has a unitary character and equal effect throughout the EU. The European Union Intellectual Property Office (EUIPO) is responsible for managing the EU trademark and EU designs.

3D Shape Marks: A 360-Degree Analysis

Abstract Today’s consumers use a range of cues to identify product origin, including brand names, logos, colours and shapes. The range of registrable marks has therefore expanded, but this brings a risk that features which others have a legitimate competitive need to use will fall under the exclusive control of a single undertaking. Registration may also be used to extend the finite duration of other IP rights that the owner has already enjoyed. Consequently, trade mark law contains functionality limitations on registration designed to protect these competitive concerns. This piece considers how well those limitations are working. The CJEU has also seemed to apply stricter distinctiveness rules to shape marks based on the assumption that consumers are not used to seeing shapes as origin indicators. Some have assumed this means that it is almost impossible to register shape marks—this research examines whether this is really so. How functionality and distinctiveness work in practice is examined through an empirical analysis over a 5-year period of all shape mark applications to the European Union Intellectual Property Office. This piece considers which types of marks are being registered, which are being refused and why. It reveals that distinctiveness, rather than functionality, is having the biggest impact on shape mark registration, and in fact a larger number of shape marks than expected are registered: often because of the addition of non-3D matter. However, are a significant number of marks comprised just of product shapes. It concludes with a discussion of competitive and policy challenges identified by this research.

Kenya mandatory IPR recordal: an innovative measure with an uncertain future

Economic growth in Africa as well as its rising middle and upper class is a reality: household consumption in Africa has increased faster than the continent’s gross domestic product (GDP), which itself has consistently outpaced the global average. Consumer expenditure has been growing at a compound annual rate of 3.9 per cent since 2010, from US$1.4 trillion in 2015 to an expected US$2.5 trillion by 2030. It is therefore no wonder that brand owners are showing an increased interest in entering and solidifying their stakes in the African markets. One major issue faced by brand owners, however, is the wide availability of counterfeit and pirated goods in Africa. No product is spared, whether it be medicines, smartphones or copyrighted content such as music, film and software. According to World Health Organization statistics, 42 per cent of detected cases of substandard or falsified pharmaceuticals occur in Africa—this is more than on any other continent.1 A European Union Intellectual Property Office (EUIPO) study found that in Africa, 21.3 per cent of total sales of smartphones were lost in 2015 due to fake smartphones. This represents 7 million handsets with a total value of €1 billion.2 In Algeria, it is estimated that 60 per cent of creative content—in particular, music and film—are pirated copyright goods. Pirated software goes up to 84 per cent.3 This is only the tip of the iceberg: counterfeiting extends beyond these products and concerns industries as diverse as apparel, vehicle spare parts, electronics, household appliances, luxury goods and fast-moving consumer goods such as food products, toiletries and beverages.

What is a significant departure from the norm? Assessing the inherent distinctiveness of 3D shape marks

... This article considers the implementation of Article 7(1)(b) of Regulation 2017/1001 European Trade Mark Regulation (EUTMR)1 as it applies to shape marks. In order for any trade mark to be registered, it must not be ‘devoid of distinctive character’. The Court of Justice of the European Union (CJEU) has stated that the test for inherent distinctiveness is the same for all forms of marks. While maintaining this position in relation to shape marks, it has also been said that for such marks to be registered they must depart significantly from the norm in the sector concerned. There has been much discussion of whether the shape mark test is in fact stricter than that applied for other forms of marks. However, this article also examines the issue from a different angle, asking how this ‘norms test’, which the CJEU has never explained, is implemented in practice. In particular, it identifies and critiques a body of practice on the part of the European Union Intellectual Property Office (EUIPO) in conducting internet searches to identify ‘the norms’ and comparing the mark in question to those norms and suggests how this practice could be improved.

Trademark registration in the European Union

Keywords: trademark, EU Regulation, EU trademark, European Union, Europeansystem of trademark protection
 The developmentof economic integration of European countries has created the need to create asingle system of legal protection of trademarks, as it should contribute to the formationof a common market, the conditions of which are the possibility of competitionand free movement of goods and services in European countries. One of the legal instrumentsto meet these conditions is the trademark, which must be used in the EuropeanUnion. The creation of a common economic space in Europe has contradicted thenational laws of each of the member states of the European Union. Therefore, there isa need to create a single European system of trademark protection.According to the EU Regulation, one of the main functions of an EU trademark isto guarantee the origin of goods and services sold or provided to consumers under thattrademark. The EU trademark is unitary. As it is registered for all member states ofthe European Union through a single procedure, it acquires rights only if it is acceptedin all member states of the European Union. An EU trademark is acquired onlythrough registration, not use.
 The EU regulation provides for the free movement of goods and services betweenmember states. Accordingly, the owner of an EU trademark cannot object to the use ofsuch a registered trademark in the European Union. Moreover, the EU regulation definesnot only the registration criteria, but also the examination procedure, includingthe possibility of objections to registration made by third parties, and the procedurefor filing claims for infringement of trademark rights.Either party may appeal the decision on the objection to the Board of Appeal ofthe European Union Intellectual Property Office. Thereafter, any issue can be appealedto the Court of Justice of the European Union, which can only annul orchange the decision.Once the EU trademark application has been published, the pre-emption holderhas three months to file an objection. Obtaining an EU trademark is essential for asuccessful brand protection strategy. Since its inception, the EU trademark systemhas become one of the most important tools available to both legal entities and individualswho want to effectively protect their trademark rights in Europe.

Zdolność odróżniająca kształtu produktu jako warunek uzyskania prawa ochronnego na trójwymiarowy znak towarowy Unii Europejskiej. Glosa częściowo aprobująca do wyroku Sądu Unii Europejskiej z dnia 14 lipca 2021 r. w sprawie T-488/20 Guerlain przeciwko Urzędowi Unii Europejskiej ds. Własności Intelektualnej (EUIPO) (Dz.Urz. C 320, 28.09.2020)

The study is a partially approving commentary on the judgment of the General Court of the European Union in case T-488/20 Guerlain v European Union Intellectual Property Office (EUIPO) . The issue in the case was the assessment of the distinctiveness of a sign applied for, comprising a lipstick in the shape of a boat hull. In the light of its findings, the Court of the European Union referred to recognised criteria for assessment, such as, i.a., a significant deviation of the design from the accepted norms and customs in the given industry sector, including the aesthetic value and originality of the design, as well as the reference of the applied shape to the relevant public. However, the case lacked evidence of secondary distinctiveness, as well as an analysis of the aspect related to the aesthetic functionality of the product and protection of market competition. The General Court came to the debatable conclusion that the shape in question is atypical for lipsticks and differs significantly from all other shapes on the market and consequently has a feature of inherent distinctiveness. This has resulted in a certain liberalisation of standards in obtaining protection for three-dimensional trademarks without word elements. In sectors where design is diverse, a new and unusual variant of the product’s shape or its packaging may, in light of the commented judgment, be protected as an EU trademark. This will probably encourage entrepreneurs to file applications for such signs. For the doctrine of law, the judgment is an interesting source of inspiration for the discourse on the systemic role of legal protection of trademarks and industrial designs.

Do the ‘conventional’ grounds for refusal also apply to EU certification marks? The Fifth Board of Appeal of EUIPO says yes

Abstract Boards of Appeal of EUIPO, Cases R 1410/2019-5, Manuka honey; R 2110/2019-5, Bio-Mineralwasser I and R 2112/2019-5, bio mineralwasser (fig.) II, 27 October 2021 The Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) held that EU certification mark applications are, like any other EU trade mark (EUTM) application, assessed on all general grounds of refusal laid down in Article 7(1) of the EU Trade Mark Regulation 2017/1001 (EUTMR). However, when assessing the general grounds of refusal, the specific function of certification must always be kept in mind. In three different cases, the Fifth Board of EUIPO decided that the certification marks Manuka honey and Bio-Mineralwasser (as word and figurative mark) are non-distinctive and descriptive.

Various Aspects of the Application for a Trademark Made in Bad Faith in the Light of EU Case Law

AbstractEuropean Union case law has in recent years brought to the surface numerous decisions that shed new light on the interpretation of bad faith in trademark law. The aim of this article is to present and discuss the premises that, pursuant to the judgments of the European Courts and decisions of the European Union Intellectual Property Office (EUIPO), are perceived as circumstances that may deem an application for a trademark as one made in bad faith. A close examination of the judicial decisions aims at determining how the approach to the concept of bad faith has been shaped in EU case law over the years since the preliminary ruling on the trademark application concerning the Easter bunny (Chocoladefabriken Lindt & Sprüngli). Initially, bad faith was identified with those unfair applications for trademarks aiming at harming a third-party interest that had used a given mark before. The rulings issued in subsequent years clearly indicate that the application for a trademark made in bad faith does not have to be connected with a similar designation used by a third party beforehand. Such an application may derive from an unfair strategy of protecting the applicant’s own designations. What is unfair here is an attempted use of the system of protection of trademarks for purposes other than those for which it serves, through making an application for a trademark for purposes other than the functioning of that trademark.

Legal aspects of green-branding

Trade mark law reflects economic and social trends. With the shift towards an economy based on sustainable development, the rise of environmental awareness among consumers, and the growing popularity of eco-marketing, marks containing indications such as „green”, „eco” or „bio” appear increasingly on the market. Such labels can inform and assist consumers in purchasing products that comply with the eco-requirements, strengthen the competitiveness of producers by promoting the least environmentally damaging products, offering higher quality products, and consequently encouraging both parties to act in an eco-friendly manner. Their registration is possible, but more difficult than for „classic trade marks” submitted for protection before the patent offices. This text is intended to provide an overview of the registration requirements of so-called „green trade marks”. The study mainly used the formal-dogmatic method. Based on an analysis of the European Union Intellectual Property Office practice and the judgments of the Court of Justice of the European Union, authors indicate the applicable interpretation of EU trade mark law. They analyze binding restrictions taking into account the interests of both individual market players and the public. This issue has not yet been commented on by the doctrine. Eco-labels and symbols, which can be used by entities meeting criteria that are defined by certification bodies are outside the scope of this review.

General Court rules that Guerlain’s shape of Rouge G lipstick enjoys trade mark protection

Abstract Guerlain v European Union Intellectual Property Office (EUIPO), T-488/20, EU:T:2021:443 The General Court (‘GC’) has overturned the EUIPO and Board of Appeal decisions, ruling that the shape of a lipstick may be registered as a 3D trade mark insofar as it represents a memorable shape that will be perceived by the relevant public as one that departs significantly from the norms and customs of the cosmetics sector. In its analysis of the distinctive character of the sign, the GC did not take into account the originality of the shape nor the high-quality design or its successful aesthetic appeal. It instead considered the range of different shapes of lipsticks available on the market and focused on the objective and uncommon visual effect of the Guerlain’s shape on the relevant public.

Miley Cyrus ‘came in like a wrecking ball’: the American pop star succeeds in registering her name as an EU trade mark

Abstract General Court, T–368/20, Smiley Miley, Inc. v European Union Intellectual Property Office (EUIPO), EU:T:2021:372 The article analyses the decision in Smiley Miley v EUIPO, in which the General Court held that the American singer-songwriter and actress Miley Cyrus was entitled to use her name as a trade mark. It considers the importance of this ruling in relation to the protection afforded to public figures of international recognition through trade marks in the EU.

Evidence Evaluation Relating to the Public Disclosure of the Community Design on the Internet

<p>The issue of public disclosure of the design is regulated in Article 7 of Council Regulation (EC) no. 6/2002 of 12 December 2001 on Community designs. Pursuant to this provision, a design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, except cases where these events could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the Community. The design is made available to the public in a situation where these events could be known in the course of normal professional activity in an environment specialized in a given sector, operating within the Community. The list of methods of public disclosure contained in Article 7 of Council Regulation (EC) no. 6/2002 is not a closed catalog. Disclosure of the earlier design on the Internet causes difficulties in assessing whether it meets the conditions required for public access, i.e. whether the design could reasonably have become known in the normal course of business to the circles specialized in the sector concerned. Moreover, the disclosure of the design on the Internet generates problems of evidence related to proving the precise date of its disclosure to the public. The article analyzes the jurisprudence of the European Union Intellectual Property Office (EUIPO) and European jurisprudence in recent years. In particular, attention was paid to the issues of evidence necessary to recognize that the Community design was made available on the Internet. The article concerns a topic that is current both among representatives of the doctrine and in jurisprudence (Polish and European). It has theoretical and practical significance, because the issue of evidence submitted by the parties on the fact that an industrial design is made available to the public is very often a problem at the stage of court proceedings.</p>

Messi vs. Massi, Prior Right vs. Reputation: The Decision of the Court of Justice of the European Union and Its Assessment with Regard to the Turkish Trademark Law

Abstract The Messi case,1 which originated with the decision of the European Union Intellectual Property Office (EUIPO) in 2011 and was finalized in 2020, surprised the IP world/practitioners with the remarks of the first instance court and the Court of Justice of the European Union (CJEU) as their findings were contrary to the established case law regarding the implementation of the relative grounds of refusal. Lionel Messi was a party to the court case as the applicant of the later application for the same classes of goods; the first instance court overruled the appeal of the owner of the earlier trademark based on relative grounds, given Lionel Messi’s reputation as a famous football player and thus the reputation of his surname ‘Messi’, even though the two trademarks were considered visually and phonetically similar. It was reiterated in the court decision that the reputation of the owner of the later trademark application neutralized the likelihood of confusion with the earlier trademark. Moreover, the judgment (dated 17 September 2020) of the Tenth Chamber of the CJEU went beyond the ordinary scope of trademark law. In this study we will discuss, in the context of the Messi decision, the influence of the reputation of a later trademark on conceptual differentiation and the possible results of not adducing evidence proving the reputation of a trademark.

Industrial Intellectual Property as the EU’s Innovative Development Factor

The article addresses correlation between the use of different intellectual property objects and the general goals of innovation policy of the EU. The subject of the research is industrial intellectual property along with trademarks and patents for inventions. The research period is limited to 2010‒2019. Based on the data from annual European innovation board and analysis of the dynamics of the activity of the EU member states in the field of intellectual property, the author identifies a group of EU countries that have the biggest potential in the use of the stipulated industrial property. It is show that trademark protection is mostly used in the medium and high-tech industries of the sample countries. However, there is a certain differentiation in the scale and dynamics of its application. Moreover, the author points out a high interest of the third countries such as USA, Japan and China in obtaining competitive advantages in the EU market through registration of a trademark in the European Union intellectual property office. The unified patent system in the EU is still at the preliminary stage as the most used national patent systems within the EU are the German and the French ones. The analysis demonstrates advantages of intellectual property systems in the Netherlands and Sweden. The author concludes that the successful implementation of the EU innovation policy through the creation of a system of exclusive industrial property rights is under way.

Registrability of pattern marks: Louis Vuitton’s Damier Azur before the General Court of the EU

By a judgment handed down in Damier Azur,1 the General Court (GC) of the EU has reversed an invalidity decision rendered by the European Union Intellectual Property Office (EUIPO), concerning the registration as a European Union Trade Mark (EUTM) of a pattern mark claimed by the French luxury company Louis Vuitton. The EUIPO found that the mark was unregistrable due to lack of distinctive character as per Article 7(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union Trade Mark (EUTMR).2 The EUIPO also ruled out that the mark had acquired distinctive character through use in accordance with Article 7(3) EUTMR. In examining the appeal against the invalidity decision, the GC agreed on the finding of lack of inherent distinctiveness but held that the EUIPO had wrongly established that the mark had no acquired distinctiveness....

Some aspects of establishing the conformity of an industrial design to the criteria for protection

Keywords: registered industrial designs, novelty, individual character, administrativeprocedure, invalidity
 The new edition of the Law of Ukraine «On the Protection of Rights to Industrial Designs» No. 3770-XII,adopted on October 14, 2020, introduced significant changes to the regulation of thelegal protection of industrial designs. The basic norms of the law were harmonizedwith the articles 212−217 Chapter 9 «Intellectual Property» of the Association Agreementbetween Ukraine, on the one hand, and the European Union, the EuropeanAtomic Energy Community and their Member States, on the other hand. The conceptsof «individual character», «the overall impression», «the informed user» and «thedegree of freedom of the designer», «the circles specializing in the relevant industry»have been introduced into the sphere of legal protection. These concepts were not previouslyused in the legislation of Ukraine. The article analyzes the content of theseconcepts on the basis of European law enforcement practice, Decision of the EuropeanUnion Intellectual Property Office Board of Appeal, Judgment of the Court of Justiceof the European Union и Judgment of the General Court of the European Union. Inaccordance with the new edition of the Law, an industrial design can be declared invalidin an administrative procedure. Authors reviewed the administrative procedure
 for establishing the conformity of a registered industrial design to the criteria for protection(a novelty and an individual character). A registered industrial design shall beconsidered to be new, if no identical design has been previously disclosed to the publicand to have an individual character if the overall impression it produces on the informeduser differs from the overall impression produced on such a user by any previouslydisclosed design. A design shall be deemed to have been made available to thepublic (i) if it has been published following registration or otherwise, or exhibited,used in trade or otherwise disclosed, (ii) except where these events could not reasonablyhave become known in the normal course of business to the circles specializing inthe relevant industry in Ukraine. Authors analyzed this two-step test. Particular attentionwas paid to the disclosure of industrial designs as a trade mark, copyrightwork, patent, utility model or otherwise on the Internet. Criteria for assessing disclosureof designs on the internet considered.

Round-up of EU trade mark decisions in 2020

This article provides an analysis of the following EU trade mark decisions issued in 2020 (listed in reverse chronological order): These decisions are discussed below and are divided by area: I. Absolute grounds for refusal (Articles 4 EUTMD1 and 7 EUTMR2) Distinctiveness/descriptiveness Public policy/morality Deceptiveness and bad faith Conflict with protected designations of origin (PDOs) and protected geographical indications (PGIs); II. Relative grounds for refusal (Art 8 EUTMR) Trade marks with a reputation The analysis of each decision is presented in accordance with the following template: Distinctiveness/descriptiveness Teva: whether slogans are capable of indicating the commercial origin of goods Case T-697/19, Teva Pharmaceutical Industries Ltd v European Union Intellectual Property Office (EUIPO) The General Court held that a slogan can indicate the commercial origin of the goods or services in question, when that sign is not merely an ordinary advertising message, but possesses instead a certain degree of originality or resonance.

EU General Court says that there is no likelihood of confusion between EU collective trade mark ‘HALLOUMI’ and ‘BBQLOUMI’

Abstract EU General Court, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v European Union Intellectual Property Office (EUIPO), T-328/17, EU: T:2021:16, 20 January 2021