Posts Tagged: "European Union Intellectual Property Office"

The World Intellectual Property Organization (WIPO) has published its annual World Intellectual Property Indicators. For the second consecutive year, the number of design applications filed worldwide continued to grow, with an estimated 963,100 applications filed in total globally. The 2016 growth rate was 10.4%, following 2015’s more modest growth rate of 2.3% and 2014’s 10.2% drop in applications. 90% of the growth in 2016 can be attributed to increased filings in China.

China has the largest domestic trademark register in the world. In 2017, over 5.2 million applications were filed, a figure which makes it around 10 times the size of the world’s second largest register, the USA. To look in more detail: in the first week of September 2017 alone, more than 116,000 applications were filed on the Chinese register – a number that exceeds the number of trademarks filed with the European Union Intellectual Property Office (EUIPO) in the whole of 2016.

The Administrative Council of the European Patent Organisation has elected António Campinos to succeed Benoît Battistelli as President of the European Patent Office (EPO). His five-year term will start on 1 July 2018.

The General Court of the Court of Justice of the European Union (CJEU) has dismissed an appeal from the unsuccessful application by Arrigo Cipriani (Arrigo) to have Hotel Cipriani’s EU trade mark (EUTM) for CIPRIANI, registered for hotel services among other things, declared invalid on the grounds that (i) it was registered in bad faith and (ii) that, under national Italian law, Arrigo had a prior right to that name… The CJEU affirmed the test for bad faith and the principle that extending the protection of a national mark by registering an EUTM is part of an undertaking’s normal commercial strategy. The fact that the Registrant had an earlier, identical national mark, which Arrigo did not oppose or object to, contributed to the finding that there was no bad faith. In any case, bad faith remains a high threshold to prove and if owners have EU national rights, which were never challenged by the invalidity applicant, this could further add to the difficulty of proving bad faith by the registrant.

Many states have statutes that make counterfeiting a state crime, but often only if the trademark is registered in that state. According to Lo Cicero, state registrations give local prosecutors and law enforcement officers jurisdiction – and they may be more able and willing to tackle local counterfeiters than are busy federal prosecutors. Thus, where budgets will allow and brand owners have significant counterfeit concerns obtaining state trademark registrations in at least several states, including California and New York, could be a worthwhile investment.

Some have dubbed it the modern-day gold rush while skeptics warn of the hostile attitude of the current administration in Washington D.C. Whatever the view there is no denying that the marijuana legalization landscape is contentious and demands attention, including from trademark attorneys who will increasingly see their clients interested in cannabis related business activities, and consequently in obtaining cannabis trademarks.

The distinctive character is one of the universally accepted criteria for registration of a sign as a trademark. This criterion is derived from the main function of a trademark, i.e. to distinguish the goods or services of one undertaking from those of other undertakings. This requirement is set out in Article 6quinquies (B) (2) of the Paris Convention for the Protection of Industrial Property and in the national laws of the countries that are parties to this Convention. Ukraine and the European Union (the “EU”) are no exception. Both in Ukraine (Article 6(2) of the Law of Ukraine “On Protection of Rights to Trademarks”) and in the EU (Article 3(1) of the EU Directive to approximate the laws of the Member States relating to trade marks), signs which are devoid of any distinctive character may not be registered as trademarks.