AFTERSUN is not a DONUT!! – No monopoly to AFTERSUN, even in Spain
Spain is obtaining the questionable reputation for protecting terms that are completely descriptive in other major languages as trademarks. MATRATZEN is one (in)famous example, DONUT is another. However, the term AFTERSUN, commonly applied to skin care to be used after sun bathing, has now been...
CJEU: Puma’s feline jumps high: EUIPO must take into account earlier decisions recognizing reputation of a mark invoked in an opposition
Athanasia Giannopoulou, Verena von Bomhard (BomhardIP) By judgment of 28 June 2018 (C‑564/16 P), the CJEU rejected an appeal filed by the EUIPO. The case was, in essence, about whether and to which extent the EUIPO could or even had to take into account its own...
Competent or not competent? That’s the question…
The Board of Appeal went beyond its competence ruling on issues not disputed in the appeal, says the General Court The Fourth Board of Appeal (BoA) of the EUIPO has once again been told off by the General Court (GC). In its decision of 6 June...
Luxury and Glamour win: KENZO ESTATE for wines and other goods misappropriates reputation of KENZO
CJEU, 30 May 2018, C-85/16 P, C-86/16 P – Kenzo Tsujimoto v. EUIPO / Kenzo [KENZO ESTATE] The fame of the fashion brand KENZO is such that it can be held against the registration of KENZO ESTATE as an EUTM for wines and “western liquors” and...
DAYADAY – General Court once again obliges the EUIPO to assess the precise level of a claimed reputation
The General Court annulled a decision by the Second Board of Appeal of EUIPO, based on an insufficient (or, rather, inexistent) assessment of the reputation claimed by the opponent (GC, 1 June 2018, T900/16, only available in Spanish and French). The case concerned largely identical marks–...
CJEU puts old seniority claims at stake: If national marks were vulnerable when they lapsed or were surrendered, they still are!
On 19 April 2018, the CJEU handed down its judgment in the matter Peek & Cloppenburg (PUC), a referral from the German Supreme Court in a litigation between two German companies of that same name (one of which runs under the name of Peek &...
The Griffin beats the Winged Bull: Marriott prevails before the GC
On 15 March 2018, Marriott Worldwide Corp., assisted by Anna Reid (D. Young & Co.), scored a major victory at the General Court (case T-151/17) against EUIPO and Mr. Johann Graf. Johann Graf had registered the „winged bull“ device or „taurophon“ as shown above on the...
Stung by the CACTUS – the CJEU strikes twice
The CJEU judgment of 11 October 2017 in the CACTUS matter (C-501/15 P) surprised twofold: first, the CJ held that EUTMs from before July 2005 that covered all class headings in class 35 automatically covered “retail services for any goods”, and then, it considered the...
When do figurative marks represent the appearance of the goods?
In the M/S. Indeutsch International case concerning the validity of the “Chevron” device shown above (T-20/16 of 21 June 2017), the General Court held that the mark (described in the registration as “a repeated geometric design”) could not be seen as representing the appearance of...
How “unitary” is an EUTM? CJEU decides in the KERRYGOLD matter
County Kerry in Ireland, a beautiful region in the South known for its cattle breeding, is known to many trademark practitioners from the early CJEU trademark judgment in GERRI vs. KERRY SPRING (C-100/02, Gerolsteiner Brunnen). It has just become the protagonist of another CJEU judgment:...