Category Archives: EUIPO

New EU Regulation: welcome EUIPO

The EU trade mark reform package, following the new Regulation 2015/2424 was published on 24 December 2015 and is effective from 23 March 2016.

One of the main changes of the reform is the new name for the Office, European Union Intellectual Property Office (EUIPO), and a new name for the marks, European Union trademark (EUTM).

For more information please check:
https://euipo.europa.eu/ohimportal/it/eu-trade-mark-regulation

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So descriptive!

 

Community trademark applicants, if you (still) were not aware of the, let’s say, new approach adopted by the Community Trademark Office in examining descriptive marks, take the time to read this.

There has been, and this is true, a period in which, in case of a very descriptive mark, the way to, despite the weak character of the mark, obtaining a registration was to combine the (descriptive) word with a logo or a graphical rendition or even just a colored wording.

Some decisions made during the last months (couple of years, or more actually) have already shown that there is a stricter approach in examining the marks (which, to say the truth, is very welcome: an office should only grant marks capable of performing their primary function): Case T-553/14, Wm. Wrigley Jr. Company [EXTRA logo],  Case R 753/2015-1 Simplepay Pty Ltd [SIMPLE PAY logo], Case R 554/2015-4,, Lidl Stiftung & Co. KG, [SIMPLY SUMPTUOUS], Case R 870/2015-4,  EHI Retail Institute GmbH [SELF CHECKOUT], etc.

We also performed a search among the recently CTM refused marks. Besides some word marks refused because of their descriptive or generic nature, there were some other comprising word elements and figurative elements, all refused: CRISPY BALANCE device, SONNEN BATTERIE figurative in colors, JEDE FLASCHE AZAHLT! Figurative in color, etc. Consequently, it is true that the examination is stricter.

Finally if the study of the EU Jurisprudence is not enough to realize that the wind has definitely change (for the CTM filing but also for the National Ones), users should also take into account the recent Common Communication on the Common Practice of Relative Grounds of Refusal – Likelihood of Confusion (Impact of non-distinctive/weak components): [https://oami.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/about_ohim/who_we_are/common_communication/common_communication_cp5_en.pdf].  Basically the IP Office of the EU have agreed on a Common Practice as to when a figurative mark, containing only descriptive/non-distinctive words should pass the absolute grounds examination on the basis that the figurative element gives the mark sufficient distinctive character (the communication is very useful since contains examples).

If are deciding whether or not filing a mark and you have some doubts that it might be descriptive, ask your IP expert for advice!

 

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IDEAS POWERED

There is a special link between young people and  IP. This why OHIM (the Community  Trademark Office) and the Observatory, as part of its mandate, launched the Ideas Powered last month, an initiative to raise awareness of the value of intellectual property and the importance of respecting it.

And ……….there is a competition going on! In fact, Ideas Powered invites young people (EU Citizens, aged 15-24) to submit videos illustrating an original idea or a project that demonstrates the importance of intellectual property.  Participants may choose a theme among   Arts (music, graphics, literature, performing arts), Innovation & entrepreneurship, Design or style.

Visit  http://www.ideaspowered.eu/en/competition to compete and to gain more information.  

Do not forget that we also support start-up companies in case you idea or future ideas become a concrete project and need to be protected!

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CTM: Another refused mark (abbreviation plus subsequent words)

This is a quite recent case of the Forth Board of Appeal of 7 August 2015 (Case R2898/2014-5), in connection, we would say, again, with descriptive/non distinctive Community trademarks.

AAL Association(AALA) sought to register the wordmark AAL Active and AssistedLiving for a huge list of goods and services in classes 16, 35, 36, 38, 41 and 42 but the mark was considered not eligible for registration pursuant to Article 7(1)(b) and (c) CTMR in conjunction  with Article 7(2) CTMR.  

Basically, the Examiner and also the Forth Board of Appeal found that the sign is descriptive since “the relevant English-speaking public will immediately understand the word combination ‘Active and Assisted Living’ as referring to an active and assisted life or lifestyle. Moreover, the letter combination ‘AAL’ will be perceived merely as an abbreviation of the subsequent words ‘Active and Assisted Living’, giving for the goods and services at issue direct information about the kind and intended purpose of them”. 

In this case it may also be argued that the proposed mark is not ACTIVE AND ASSISTED LIVING per se and that the presence of AAL should avoid the descriptive connotation of the whole mark. But this is not true: according to the constant jurisprudence of the Community office “the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. Thus, in order to assess whether or not a  trade mark is eligible for registration, the overall impression given by it must be considered, which may however mean first examining, in that  overall assessment, each of the individual components of which that mark is composed”.  

The mark has also been found not distinctive since incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer to repeat the experience if it proves to be positive,or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition.

In fact, according to the Office, the sign ‘AAL Active and Assisted Living’ will be perceived as a purely laudatory statement that all contested goods and services are aimed at assisting the consumers to live an active and independent life  as  long  as possible. 

Now, while choosing your mark,  bear in mind that the juxtaposition of a  two descriptive elements  is not enough to avoid a refusal and that it is necessary that your mark possess originality and resonance (there should be a minimal interpretation by the public or the mark has to trigger some cognitive process in the minds of that public). 

And, needless to say, if you are not able to understand if a mark is eligible for registration or not, you need the advice on a trademark expert!!

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