FRIDAY, 24 JUNE 2016
Brexit and EU IP Rights

This morning, we woke up to the news that the UK will leave the EU. As German foreign minister Steinmeier said on Twitter: "Damn!". This decision brings in its wake a lot of political, commercial and legal uncertainty. The next months and years will show what new relationships will be forged between the UK and the EU. We might see a "soft exit" with a relationship similar to that Switzerland enjoys with the EU, or a "hard exit" where the UK would not enjoy any preferential status. However, the UK will not leave the EU for some time yet. There will be exit negotiations ikely to take several years. During that time, the UK remains a regular EU member.

Hogan Lovells have drafted a brief overview of implications the "Brexit" will have on IP rights such as EU Trademarks. In due course, brand owners will need to ensure protection at national level. Time and political negotiations will tell how smooth this transition can be made.

Posted by: Anthonia Ghalamkarizadeh @ 09.36
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MARQUES Conference reminder: be an early bird!

"Brands versus Trade Marks; Trade Marks versus Brands" is the somewhat enigmatic theme of this year's forthcoming MARQUES Conference in Villaitana -- a brilliantly conceived village outside Alicante, Spain. 

Much will be written and said about this exciting event before it takes place on 20 to 23 September. This blogpost is simply to remind readers that there is a special Early Bird offer for anyone who registers by1 July.

For further details, just click here.

Posted by: Blog Administrator @ 22.17
Tags: MARQUES Conference, Early Bird,
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July ETMR now available

The July 2016 issue of the European Trade Mark Reports (ETMR), a series of law reports published monthly by Sweet & Maxwell, is now available. The ETMR contains English-language reports, together with informative headnotes, of recent decisions from national and EU courts and intellectual property offices.  

Six cases are reported in the July issue -- four from the High Court, England and Wales, and twp from the European Union's General Court. 

MARQUES members are again reminded that, if they have been involved in European trade mark litigation which is of significant interest, and if they can provide an English-language text of the full decision of the court, the ETMR will be delighted to consider it for publication.

Posted by: Blog Administrator @ 18.49
Tags: ETMR, European Trade Mark Reports,
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Switzerland: deliveries to a subsidiary are not use in commerce

Pierre Fabre, proprietor of the Swiss trade mark ELUAGE, registered for skin care products, lodged an opposition against the trade mark YALUAGE by Sofar Swiss AG, claiming protection for similar goods. Sofar raised the objection of non-use of the older mark, and in a first decision, the IPO sided with Sofar and rejected the opposition. After Pierre Fabre had filed additional evidence, the IPO allowed the opposition partially (for certain goods), only for the Federal Administrative Court to overturn the decision on appeal.

What happened? Pierre Fabre had shown deliveries of products bearing the mark in question in the relevant period to its Swiss subsidiary, but no sales to retailers or end customers. The Administrative Court reminded everybody that within-group sales were not use in commerce, as the mark was not used to indicate the source of the goods in this context. Since Pierre Fabre had failed to demonstrate sales to unaffiliated parties, it had failed to show use in commerce, and the mark was unenforceable. Opposition dismissed.

The decision shows once again that proving genuine use in commerce is not an easy undertaking. It also seems overly formalistic. What's the point of the deliveries to the Swiss subsidiary, if not to put the goods on the Swiss market? In administrative proceedings, the court theoretically has to gather the evidence by itself (it does not do so in opposition proceedings). ELUAGE is clearly in use in commerce in Switzerland, as even a quick search on the internet confirms. In the March 2012 issue of the consumer magazine SALDO (in the relevant time period), the ELUAGE eye cream was tested. How would SALDO have acquired the cream, if not from a Swiss re-seller? Together with the sales to the Swiss subsidiary, this makes it more than likely that the mark was genuinely used in commerce in Switzerland. The result of the overly strict practice is that Swiss consumers will be faced with the marks ELUAGE and YALUAGE used for similar goods, which I do believe causes confusion.

B-6986/2014 of 2 June 2016 (PDF)

Posted by: Mark Schweizer @ 13.30
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MONDAY, 20 JUNE 2016
General Court: efekt perlenia (fig.) lacks distinctive character

In Case T-298/15, the EUIPO rejected the TM application by Atlas sp. z o.o., for goods in Classes 1, 2, 17 and 19 

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First, the mark covers products such as building materials and insulation, chemicals and paints and varnishes, which are intended mainly for the construction sector specialists. The attention of consumers, be they specialists or average consumers making small works, will be high. Regarding the descriptive character of the mark, it is composed of verbal elements' efekt "and" perlenia "and graphics representing a surface with small drops of water in a circle.  The term "efekt perlenia ', mean 'drops, pearls' onset phenomenon " in Polish. In the field of construction, that expression has a technical meaning specific referring to the appearance of surface drops (facades, seals) and that this is sign of the quality of the waterproofing (according to websites Murator and Budownictwo Polskie » related to construction work) . The appearance of small drops on the surface thus demonstrate that the treated elements (facades, joints) do not absorb moisture. 

Therefore, for the products in question, the expression informs directly the consumers that their use permit adequate surface protection against moisture.  Since the same ground for refusal is applicable to all the products in question, there is no obligation to provide a separate justification for all the materials examined.

 Regarding the absolute ground for refusal based on lack of distinctive character of the mark, the drops of water on an asymmetrical cross in the background represent a repellent phenomenon on joints and illustrate the information related to the products contained in the word 'efekt perlenia " . Therefore, the overall mark is devoid of any distinctive character.

The General Court upheld the decision and dismissed the appeal.

Posted by: Laetitia Lagarde @ 19.04
Tags: general court, absolute, grounds, efekt perlenia, construction,
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FRIDAY, 17 JUNE 2016
Kosovo opts for notarized Powers of Attorney

With effect from 8 June 2016, the Kosovo Intellectual Property Office does not accept any action if not accompanied by an original Power of Attorney (PoA) form or at least a notarized copy of the original is acceptable. Kosovo notaries will only certify a copy if the original is notarized in the country of origin.

This change applies to all filings before the Kosovo IPO, such as new applications, renewals, responses to office actions, oppositions, recordals, or any other action before the IPO. Scanned copies of PoAs will not suffice to meet any deadline or obtain a filing date. locally, but only based on an already notarized original.

Source: Petosevic.

Posted by: Blog Administrator @ 14.21
Tags: Kosovo,
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General Court: lack of genuine use for the culÚs v Kule

For all the Euro football fans, the General Court played its part on the field today with a case related to one of the great football clubs of the EU.  The Court dismissed the appeal in Case T‑614/14 regarding the sign KULE and whether it could be blocked by the earlier marks for the word CULE.

The opposition was between the following parties

Kule LLC (USA) - EU TM applicant

Fútbol Club Barcelona (Spain) - Opponent


earlier Spanish marks for CULE

- No 1021594 registered for Class 14

- No 1021596, designating goods in Class 18

- No 2716946, designating goods in Class 25

- non-registered word mark CULE, well known in Spain within the meaning of Article 6bis of the Paris Convention

Class 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; Jewellery, precious stones; Horological and chronometric instruments’;

 Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Backpacks; Handbags; Purses; Trunks and travelling bags; Umbrellas, parasols and walking sticks; Wallets; Whips, harness and saddlery’;

 Class 25: ‘Clothing, footwear, headgear’.




The Opposition Division and Board of Appeal rejected the opposition based on the lack of genuine use of the earlier trade marks for the purposes of Article 42(2) and (3) of Regulation No 207/2009.

As a reminder, proof of use must consist of indications concerning the place, time, extent and nature of use of the earlier trade marks for 5 years preceding the date of application of the contested mark, in this case 23 August 2011.

 The opponent produced the following documents

–        an extract from the Spanish dictionary of the Real Academia Española which defines the term ‘culé’;

–        five print-outs from websites dedicated to sports news in Spain making reference to Fútbol Club Barcelona and its supporters or players, nicknamed ‘culés’;

–        a print-out from a website making reference to Fútbol Club Barcelona and the ‘lotería culé’;

–        a print-out from Wikipedia containing information on Fútbol Club Barcelona and stating that its supporters are nicknamed ‘culé[s]’;

–        two other print-outs from websites dedicated to sports news in Spain and making reference to Fútbol Club Barcelona and its supporters or players, nicknamed ‘culés’;

–        a print-out of a Google search for the term ‘culé’ showing five references, two of which refer to an open online dictionary forum and two of which refer to Fútbol Club Barcelona.

The opponent argued that the evidence produced shows that its earlier trade marks are widely used to identify Fútbol Club Barcelona and that they are used on the market by certain licence-holders in order to distinguish clothes and accessories. However, no evidence regarding the alleged licences were produced.

However, the General Court upheld the reasoning of the EUIPO.

Regarding the earlier registered Spanish trade marks, the documents filed did not demonstrate genuine use of the earlier trade marks for the purposes of Article 42(2) of EUTMR and Rule 22(2) of EUTMIR. First, the documents submitted did not demonstrate use of the earlier trade marks in relation to the goods concerned and some documents were submitted out of time so they could not be taken into account as evidence of genuine use.

Regarding the earlier well-known trade mark,  the documents submitted by the opponent within the relevant period merely show that the Spanish word ‘culé’ is used in relation to the Spanish football club FC Barcelona, particularly as the nickname used for its supporters.  Such use does not constitute genuine use of the mark ‘CULE’ in Spain, and a fortiori, does not prove that this mark is well-known in that country.

What does CULE mean ? see here 

Keeping up with football in 2016 here

Posted by: Laetitia Lagarde @ 18.13
Tags: general court, genuine use, cule, barcelona, kule,
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