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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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Genuine Use of a CTM

The question of what constitutes genuine use of a CTM has caused much controversy in EU trade mark circles over the past 20 years. Some thought that the European Court’s ...

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Differing Views on the Similarity of Revolvo and V...

The extent of harmonisation of European trade mark law and practice was recently illustrated by two opposition decisions involving the trade marks Revolvo and Volvo. In ...

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Swatch Loses Swatchball Match

The European Court decision in Revolvo/Volvo, should be compared with another recent dispute that involved a consideration of Article 8(5) CTMR. In this case, the mark a...

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Intel inside Biointel not enough for Dilution

A more understandable decision in a case involving a well-known mark was given in the UK trade mark opposition between Retroscreen Virology and Intel Corporation (O-229-1...

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Bulldog tamed by Redbull

More on Red Bull, another recently published General Court decision (Red Bull GmbH v Sun Mark Ltd; T-78/13) confirms the hold that the Austrian company appears to have ov...

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Caviar and Champagne on Toast

How far can the owner of a well-known protected designation of origin, for example Champagne, extend its rights to prevent the laudatory use of its sign for entirely unre...

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Chicken Tikka still available at the Masala Empire...

Regular readers of Make Your Mark will be aware of the unjustifiably broad rights that are often given by OHIM and the European Court to the owners of earlier marks conta...

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Chelsea Man sick as a Parrot

The recent contest between Chelsea Football Club and Benetton Holdings illustrates the point perfectly. Chelsea filed a UK trade mark application for their Chelsea Suppo...

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Stylisation avoids Confusion

The effect that a degree of stylisation of a trade mark can have on the outcome of an opposition has been illustrated in a recent dispute before the UK Trade Mark Office ...

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Sleep On not on Cloud Nine

Under Section 5 of the UK Trade Marks Act 1994, only the proprietor of an earlier trade mark right can bring either an opposition or an invalidation action against a late...

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Registering Yang He in the UK is not Bad Faith

The difficulties associated with preventing a third party from choosing a trade mark that is well-known in one jurisdiction and registering it for identical goods (or ser...

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New CTM Regulation will allow Class Headings of Ex...

On 8 June 2015, the European Commission finally published what ought to be its final proposals for the revision of the European trade mark system, including the CTM Regul...

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When is the Name of a Fictional Character (e.g. Pi...

Two recent decisions by OHIM Tribunals suggest that, whilst the names of certain well-known fictional characters may be viewed as inherently distinctive by the CTM Office...

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OHIM's Class 5 Practice in need of Urgent Review

One area of European trade mark practice where the possession of a coin to toss, when seeking to clear a trade mark, is pharmaceuticals (Class 5). Two (European) General...

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EU Public likely to confuse Portobello Road Gin wi...

As if to emphasise the above point, the owner of the European wide PDO (Protected Designation of Origin) rights (Instituo Dos Vinhos Do Douro e Do Porto IP) in (port) win...

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Rienergy Cola the Latest to Fall Foul of Coca-Cola...

In the last edition of Make Your Mark (Spring 2015), we reported a successful opposition by Coca-Cola to a CTM application for a Master logo which was printed in a style ...

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What's in a (Scientist's and Dictator's) Name?

Three recent trade mark applications for personal names attracted the attention of the writer. Two UK trade mark applications, owned by the well-known theoretical physici...

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Spanish Not Easily Confused Shock!

El Corte Ingles (in English, The English Cut (as in a tailor’s cut)) is a large department store group that is headquartered in Spain. Its outlets, in Portugal and Spain,...

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CTM Regulation Out of Touch?

Since the European Court’s decision in the Sieckmann case (C-273/00), it has become impossible to register certain miscellaneous type marks, such as smell and touch marks...

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Lego plays well to avoid Invalidation

Since the loss of its basic patent, design and (more recently) trade mark protection for the Lego building brick in the EU, the highly successful Danish manufacturer of c...

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