Lipstick as a trademark? Why not says the General Court

[Tanja Wittmann] According to a press release of 14 July 2021, the General Court of the European Union (GC) rendered a judgement in Case T-488/20 Guerlain v EUIPO allowing the shape of a lipstick for registration. Guerlain filed an application for registration of the following three-dimensional EU trademark: The EUIPO Examiner rejected the application for […]

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Judgment of the General Court in Case T‑510/19

In 2013, the Italian company Gemma Group Srl (Gemma) filed an application for registration of an EU trade mark with the EUIPO for “Machines for processing of wood; machines for processing aluminum; machines for treatment of PVC” (Class 7 Nice Agreement) for the following figurative sign: On 8 July 2013, Puma SE (Puma) filed an […]

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Joined cases C-449/18 P and C-474/18 P

[Tanja Wittmann] In a press release, the Court of Justice of the European Union reported on its judgment of 17 September 2020 in Joined cases C-449/18 P EUIPO v Messi Cuccittini and C-474/18 P J.M.-E.V. e hijos / Messi Cuccittini. In the meantime, the judgement is available in Spanish and French.

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Judgement of the General Court in case T‑105/19 – Designs as trademarks

[Gert Würtenberger] While (registered) designs are only protected for a limited time the possibility to obtain trademark protection for a design is attractive. According to (harmonized) European Trademark Law it is sufficient that a design to be registered as a trademark can be represented in a manner which enables the competent authorities and the public […]

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Is the decision by the Executive Director of the EUIPO regarding extension of time limits in the context of the coronavirus outbreak (COVID 19) legally valid in every respect?

|Tanja Wittmann| In the context of the coronavirus outbreak, the Executive Director of the European Union Intellectual Property Office (EUIPO) – with Decision No EX-20-3 of 16 March – extended all time limits expiring between 9 March 2020 and 30 April 2020 until 1 May 2020. In practice, the time limits will expire on 4 […]

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International Jurisdiction in Cases of Infringement of Union Trademarks

|Gert Würtenberger| Trading platforms for marketing are tools that are gaining more and more importance. For this reason, it is quite obvious why infringements of rights such in designs and trademarks very often occur through promotion and distribution activities via platforms. As the same are accessible worldwide whereas the placing of infringing goods may occur […]

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Infringement of a Union trademark – Where to sue?

|Gert Würtenberger| According to Article 97 V of the European Union (EU) Trademark Regulation 2017/1001, proceedings in respect of actions and claims connected with infringements of Union trademarks may also be brought before the courts of the Member State in which the act of infringement has been committed or threatened. Exempted from that possibility are […]

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Genuine Use of a Registered Trademark – Decision of the Second Board of Appeal of 23 October 2019 in Case R 767/2019-2

|Gert Würtenberger| A Union trademark that has been registered for more than five years is subject to the user requirement in order to safeguard its enforceability in opposition and/or infringement proceedings (as regards proof of use in opposition proceedings, see Article 47(2) EUTMR). Whether genuine use has occurred is, according to established case law, to […]

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Use of a figurative trademark

|Gert Würtenberger| According to the observations of the author of this Blog contribution, cancellation proceedings in relation to Union trademarks having been registered for more than 5 years are steadily increasing. This is not astonishing bearing in mind that the Union trademark system exists now for more than 20 years.

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