The CJEU have recently issued a judgment in Case C-456/19, referred from the Swedish Patent and Market Court of Appeal. The case centred on whether a trade mark consisting of colour combinations, intended to be systematically affixed to goods used to deliver the services covered by an application, must depart significantly from the norms and customs of the commercial sector in order for the trade mark to have distinctive character. This is a test which has been applied in relation to 3D trade marks but we have not seen it applied to these type of colour combination marks before.
Insights: Trade Marks
The rules governing address for service for intellectual property rights in the United Kingdom will change after the UK exits the European Union on 1 January 2020. Subject to legislative implementation, which is expected this week, from 1 January 2021 the UKIPO will no longer accept addresses in the EEA as a valid address for service. As a result, any party wishing to file an application for a trade mark, patent or registered design will need to appoint an address for service within the UK, Gibraltar or the Channel Islands.
The Court of Justice of the European Union (“the CJEU”) has recently issued a judgement concerning the genuine use of Ferrari’s German TESTAROSSA trade mark registrations. This judgement was a positive outcome for Ferrari, and is particularly beneficial to owners of legacy and heritage brands.
In March 2013 the mark was granted registration under EUTM No 010914836 in Classes 9, 20 and 35. The protected goods included “Smart phones, Mobile computing devices, tablets” and “Furniture”, while the services included the retailing, wholesaling and mail order of these and other goods. On 29 February 2016, Samsung Electronics GmbH (“Samsung”) applied for a declaration that the registration was invalid on the basis that the mark was non-distinctive and descriptive in relation to all of the protected goods and services. However, the Cancellation Division rejected Samsung’s application and the registration was maintained. The Cancellation Division found that the term “SMART THINGS” was descriptive, and noted that the figurative element “:)” (“the emoticon”) is ubiquitously used as a smiley in society at large, including in business, and has positive connotations. However, the Cancellation Division held that the emoticon endowed the mark with at least a minimum of distinctive character and meant that the mark as a whole was not purely descriptive.
OFF-WHITE wins its appeal at the General Court to register the OFF-WHITE black and white logo trade mark
OFF-WHITE has won its appeal at the General Court to register the OFF-WHITE black and white logo trade mark in the EU following the decision of the EUIPO that the mark is inherently descriptive and non-distinctive.
Manchester United FC has initiated trade mark infringement proceedings in the High Court against SEGA Publishing Europe Limited, the European arm of the Japanese video-game brand, and Sports Interactive Limited, producers of the video game Football Manager®. The game Football Manager® has been around since 1992 and is a hugely successful football management simulation video game. Players can manage their own virtual equivalents of real life clubs, controlling everything from pre-season transfers to the tactics on the pitch.
26 April 2020 is World Intellectual Property Day. World Intellectual Property Day is an event established by the World Intellectual Property Office (WIPO) to inspire the public to “learn about the role that intellectual property rights play in encouraging innovation and creativity”. Each annual event has a theme and this year’s theme, focussing on climate change, is “Innovate for a Green Future”.
On 3 March 2020, a company called Cobblestone Lane LLC filed an application in the USA for the mark ARCHEWELL. The application was in respect of a wide range of goods and services, including charitable fundraising and emotional support and counselling services. Taking advantage of the 6 month “priority” period that follows the first filing of a trade mark, further applications were filed in the UK, EU and elsewhere for the same mark and goods/services, claiming the benefit of the original US filing date. So far, so fairly usual. Then on 6 April 2020, the Telegraph newspaper in the UK revealed that the applications had been filed on behalf of the Duke and Duchess of Sussex, who planned to launch a new non-profit organisation under the name ARCHEWELL.