Brands Update: quick read

EU developments

EU General Court decision illustrates that broad protection can be given to seemingly descriptive marks

The EU General Court decision in Unilab v EUIPO illustrates that only relatively basic English words are considered understood in many EU member states. 

The Court deemed that there was a likelihood of confusion between an earlier EUTM registration for the mark Healthies and logo (depicted below left) registered for pharmaceuticals and a later EUTM application for the mark HEALTHILY (depicted below right) covering pharmaceuticals and medical devices. 

The Court agreed with the Board of Appeal that the word 'health' has no meaning for the average consumer in Hungary, Spain and Italy and that the earlier mark is not therefore descriptive of pharmaceuticals. In these territories, at least, there would be a likelihood of confusion between the marks.

The decision illustrates that registrations can sometimes be obtained for arguably descriptive words with logos then be used to block the registration (and sometimes use) of later marks containing similar descriptive elements. 

EU General Court confirms that knowledge of third-party prior use must be evidenced to show bad faith

Allegations of bad faith are often made on the basis that an application has been filed for a mark that properly belongs to a third party. In Dermavita v EUIPO, the General Court confirmed that there must be concrete evidence that – at the time the trade mark applicant filed its application – it had prior knowledge of the third party's use of the same/similar sign. 

The fact that a mark has been used in other countries does not evidence that the trade mark applicant was aware of that use. Likewise, sending a cease-and-desist letter to the trade mark applicant putting it on notice of such use does not necessarily evidence knowledge of use unless there is evidence that the letter in question was received by the trade mark applicant.

The decision also emphasises that, even if the requisite knowledge exists, that is only one factor in determining whether the trade mark application was filed in bad faith. The concept of bad faith is broader than the deliberate registration of a third-party mark for similar or identical goods or services. The trade mark applicant must have acted with dishonest intentions in filing its application.

For more, see our quick guide to bad faith as well as our guide to the new common practice 13 on bad faith.

EU General Court considers scope of prior design registration disclosures

In Puma v EUIPO, the EU General Court has held that, where a prior registered design is being relied on to invalidate a later registered design, the comparison is not necessarily limited to the parts of the prior design for which protection is sought.

In this case, the design registration alleged to be invalid consisted of the design of a whole shoe (from many angles). The prior design registrations relied on all consisted of the image of a whole shoe but protection was only claimed for the soles of the shoes (as indicated by the use of dotted lines in the registrations to delimit protection). The Court was of the view that the comparison should be between the whole shoe forming the prior design and the whole shoe alleged to be invalid.

The Court confirmed that the overall impression created by the contested design was different to that created by the prior designs. This is not surprising given that the comparison was between the whole shoes, and not just their soles.

Surprisingly, the Court also held that distinctive word and figurative signs (indicating commercial origin) within the design alleged to be invalid should be ignored in the comparison. They were deemed not to be ornamental or decorative and therefore not part of the designs. That seems surprising when an applicant can always choose not to include words and logos within design applications and will often want specific protection for them.

EU General Court says NOT MILK (stylized) is descriptive

The EU General Court has upheld the refusal of an EUTM application for the mark depicted below on the grounds that it is descriptive of the goods applied for – milk substitutes and fruit and vegetable beverages. While only a minimum degree of distinctiveness is required for registration, this mark fell short of the requirement and its stylization was not sufficient to push it over the line.

EUIPO Grand Board of Appeal confirms COVIDIOT mark contrary to public policy and morality and non-distinctive

The Grand Board of Appeal of the EUIPO has held that the COVIDIOT mark depicted below is not registrable as an EUTM (for toys, gaming software, mobile apps and other goods) as it is contrary to public policy and accepted principles of morality, as well as being non-distinctive.

The word COVIDIOT refers to a person failing to observe guidelines or laws designed to prevent the spread of COVID-19. The Grand Board considered that the mark trivialises the pandemic in view not only of the meaning of the word COVIDIOT, but also the use of a jester's hat and the nature of the goods applied for.

It also held that, in determining whether a mark is contrary to "accepted" principles of morality, the principles of minority groups should be taken into account. It pointed, in particular, to Treaty-based and other rights regarding respect for minority groups.

In interpreting EU laws, courts and tribunals must take account of the need to protect fundamental (human) rights such as freedom of expression. Here, the Grand Board deemed the refusal of the COVIDIOT application a necessary and proportionate restriction of the applicant's fundamental rights.

The Board also considered that the mark lacks distinctiveness, indicating a particular person as opposed to a specific source of goods.

For more, see our quick guide to marks contrary to public policy/morality.

Recent EUIPO Board of Appeal decision shows that marks can be objected to for lack of distinctiveness at any time before registration

The Board of Appeal has declined to consider an appeal of an opposition decision on the grounds that the mark opposed (an application for NOW TV by RTL) might not be sufficiently distinctive for registration. It therefore remitted the application back to the Examination Division for a decision on distinctiveness.

If the Examination Division says that the mark meets the absolute grounds for registrability, the Board will resume its consideration of the appeal in the opposition.

The decision illustrates that, even though a mark might initially pass the examination stage, absolute grounds of registrability can be considered by the Examination Division at any time up to registration. The same is true in the UK.

More developments on protection for geographical indications

The revised geographical indication regulation for agricultural products, wines and spirit drinks has now been published. The regulation applies from 13 May 2024 with the exception of the new national opposition and verification/attestation of compliance procedures, which apply from 1 January 2025. For more on what this regulation means, see here.

Meanwhile, the EU Commission has announced that the delegated regulation which will accompany the new GI regulation for craft and industrial products will be published in Q4 2024. The delegated regulation will cover procedural issues arising under the new regulation including the application process, the documentary and other requirements and the process for appeals. For more on what this regulation means, see here.

Government of Jersey finally confirms that EUTMs no longer protected in Jersey and outlines proposals for new laws

The government of Jersey has said that EUTMs do not give protection in Jersey and that existing EUTMs have not been protected in Jersey since 12 April 2009. This is contrary to the position taken by many law firms in Jersey. The confusion arises from the fact that Jersey unilaterally recognised EUTMs as giving rise to protection in Jersey from October 2000. However, the relevant provision in Jersey law referenced the CTM Regulation. That Regulation was repealed in 2009. The Jersey government says that EUTMs no longer covered Jersey at that point ie protection did not continue under the new EUTM Regulation.

It means that, to obtain trade mark protection in Jersey, an applicant must now either:

• apply to "re-register" an existing UK trade mark registration (including a comparable UK registration) in Jersey, or 

• rely on the automatic coverage in Jersey provided by international registrations (IRs) designating the UK. (Note that IRs covering the EU never covered Jersey.)

While the options seem relatively straight-forward, the position is made more complex by the fact that Jersey proposes to amend its trade mark system. If the proposals go ahead, it would mean that it is no longer possible to obtain trade mark protection in Jersey in either of the above two ways. Instead, protection would be obtained in one of the following two ways:

• By applying for trade mark protection directly in Jersey at the Jersey IP Office (JIPO) (without the need for an existing UK trade mark registration). This new primary system of registration would be largely modelled on the framework set out in the UK Trade Marks Act 1994. Fees would be similar to those applied in the UK by the UK IP Office. 

• By designating Jersey as part of an IR. This assumes Jersey is successful in its efforts to join the Madrid trade mark system.

Transitional provisions would ensure that marks protected in Jersey at the time the new regime comes into force would continue to benefit from protection for a set period of time (and possibly even up to the next renewal date for re-registered marks). At that point, the owners of marks re-registered in Jersey or IRs designating the UK would need either to (a) apply to renew the mark in Jersey directly with the JIPO or (b) apply to designate Jersey under the international system. Where applications (for re-registration in Jersey or to designate the UK under an IR) are pending at the time the new laws come into force, transitional provisions would – again – ensure continued protection in Jersey for a set period of time, with the same two options applying at the end of that period.

The precise nature of these transitional provision is currently unclear, with the Jersey government saying that it will work with industry experts to develop provisions that strike the right balance. There is (a sort-of) acknowledgement of the need to maintain original priority/filing dates but nothing specific on how this might be achieved, particularly in the case of Jersey designations under IRs. Presumably, the Jersey government could unilaterally provide that a Jersey designation is deemed to have been filed on the same date as any pre-existing UK designation, but it is not completely clear if this would work. We are currently liaising with our counterparts in Jersey on the best approach to trade mark protection in Jersey in light of this and will report soon.